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Patent and Trademark "Searches" Performed by Lambert & Associates
Patent Searches
There are many different types of patent searches: (1) Novelty searches (also called Patentability, Novelty/Obviousness searches); (2) Infringement searches (also called Clearance, Freedom to Operate, or Right To Use searches); (3) Validity searches (also called Invalidity or Enforcement Readiness searches); and (4) State of the Art searches (also called Collection searches). Each type of search has a different purpose and requires a different strategy.
1. Novelty Searches
The novelty search is the most common type of patent search. Lambert & Associates conducts novelty searches when a client has an invention which he or she is interested in patenting and desires to determine if anyone has previously invented anything similar or identical. These searches have no date constraints on the prior art. Before expending much effort and expense toward developing an invention, certainly before applying for a patent, Lambert & Associates recommends that clients allow us to perform a novelty search to determine whether their idea is truly novel, has already been patented, or has been anticipated or rendered obvious.
2. Validity Searches
The idea behind a validity search is that the Patent Office may have issued the patent in error. Patent Examiners sometimes miss a relevant piece of prior art and this results in an issued patent with claims that should not have been allowed. One way to win an infringement case is to invalidate the patent in question. If a patent search can locate "prior art" that "reads on" the claims of the patent in question, those claims will be removed from the patent.
3. Infringement Searches
Infringement searches are conducted to see if a proposed product or invention "infringes" any active patents. Lambert & Associates recommends this in-depth search and analysis whenever the firm or the client becomes aware of an active patent containing a description similar to the client's proposed or existing product.
4. State-of-the-art Searches
This type of search is for those clients who want us to determine what is currently being developed in a given field. During this search, our attorneys pick patents representative of a specific technology but do not cite every patent having to do with the technology.
Trademark Searches
Lambert & Associates conducts trademark searches for clients to determine if their proposed trademark or service mark causes a "likelihood of confusion" with any pending application or issued registration.
"Likelihood of Confusion" is a legal basis that the U.S. Patent and Trademark Office (USPTO) may use to refuse registration of a trademark or service mark because it is likely to conflict with a mark or marks already registered or pending before the USPTO.
After a trademark application is filed, the assigned USPTO examining attorney will search the records to determine if such a conflict exists between the mark in the application and another mark that is registered or pending before the USPTO. The USPTO will not conduct any preliminary searches for conflicting marks before an applicant files an application and cannot provide legal advice on whether a particular mark can be registered.
The principal factors considered by the examining attorney in determining whether there is a likelihood of confusion are: (1) the similarity of the marks; and (2) the commercial relationship between the goods and/or services listed in the application.
To find a conflict, the marks do not have to be identical, and the goods and/or services do not have to be the same. It may be enough that the marks are similar and the goods and/or services related. If a conflict exists between an applicant's mark and a registered mark, the examining attorney will refuse registration on the ground of likelihood of confusion. If a conflict exists between an applicant's mark and a mark in a pending application that was filed before the applicant's application, the examining attorney will notify the applicant or his or her attorney of the potential conflict and possibly suspend action on the applicant's application. If the earlier-filed application registers, the examining attorney will refuse registration of the applicant's mark on the ground of likelihood of confusion.
