Intellectual Property Searches

A FAQ/Help Guide to Our flat-fee Patent Searching Services
About Our IP Searching Practice
Why It Matters Who Performs Your Search
A Highlight of Our Searching Methodology
Our Searching Services
What Search Reports Generally Include
How to Get an IP Search Started
How Good Is a Patent Search?

About our IP searching practice

Bay Area IP offers extensive in-house searching capabilities. Because a quality search is often the first step before investing significant time and money into procuring a non-provisional patent, we give our IP searching practice the full attention it deserves. Please review the services provided below, or contact us to inquire about a specific type of search that is not listed. In general, your requested search is performed by highly qualified professionals that have a graduate, or if appropriate, an undergraduate, technical degree. An experienced registered patent agent who is very familiar with your case can also perform your requested search and/or provide an opinion upon request. Our clients typically request that an agent of our firm handle their case from start to finish because there is great value in having the same registered practitioner perform all aspects of your case such as performing a prior reference search, providing an opinion, and preparing/prosectuing your application, . However, some clients, for a multitude of reasons, will prefer to choose different firms or agencies to perform each step of the process. Bay Area IP is extremely flexibly in working with these needs in a very professional and ‘no hassle’ fashion. For example, a search report, including our detailed commentary, is yours to keep, and use as you will. Of course, we would love to have you also choose us to provide you a patentability opinion and patent application, but our searching services are a separate activity at Bay Area IP and there are no ‘hooks’ , questions, or pressure against you taking your search report or patentability opinion to another firm, for any reason.

Please review the following link describing how the firm-client privilege protects, by law, your confidential disclosures to our firm in strict confidence. It makes clear why you should only work with registered/licensed practitioners for all of your IP related needs. Furthermore, because Bay Area Intellectual Property Group performs your search in-house, unlike many IP firms, you have much less risk that an external search agency might leak your confidential information. Moreover, to avoid inadvertent problems, we have very strict security procedures in place that guard against any potential misuse of our client’s confidential information.

Why it matters who performs your patent search

With millions of, potentially obscured, reference documents available against your application the skill of the searcher can make all the difference. Many factors in the searching process require professional skill to overcome. By way of example for patent prior-art searches, a simple keyword search usually is not sufficient to find the most relevant reference art that the examiner or some opposing party may find. One reason for this is that it is a common practice for some inventors who want to hide their patent to hinder keyword search engines by not using common keywords to describe or claim their invention. This obstacle often precludes a non-technical person from finding the most relevant prior-art. Even when a keyword search does return a large number of candidate references, a searcher must have a solid understanding of the technology and common legal practice to narrow the search efficiently and accurately such that pertinent references are not ignored and non-relevant references not included in the final report.

Hence, the best search results, albeit more costly, tend to come from search professionals having a pertinent graduate degree who also have adequate patent preparation/prosecution experience. This experience enables them to rely on conceptual, and not keyword, searches whereby they avoid superfluous information and quickly determine what is “close enough” to report. Unlike a keyword search, a conceptual search paradigm is rooted in the contextual cues found in the particular domain being searched. Bay Area IP search professionals are all experienced technology specialists, and depending on your needs, a search professional experienced in patent practice can perform your search.

It is well know that when a prior-art searcher does not have adequate technical or legal knowledge the result can be unsatisfactory since follow-up searches will be difficult for them to efficiently perform because they do not, generally, know what constitutes "a good reference," but have to consult with the patent practitioner and/or technology specialist after each search. Similarly, not being part of the search will generally hinder the patent practitioner and/or technology specialist from accurately suggesting what other search parameters or methods might improve the search. Thus, it is difficult for such searches to arrive at a high confidence search results. That is why the best search results are achieved when a patent practitioner both performs the patentability search, and handles the patent case; although this option is a little more expensive.

A Highlight of Our Searching Methodology

Bay Area Intellectual Property Group performs online searches, as opposed to manual searches at a USPTO depository. Within the past year, online database capabilities have improved to the point where we now find that there is little, if any, advantage to past manual searching methods. A typical online text search entails one of our search professionals (a degreed technology specialist and/or registered patent agent) working with online database providers such as Dialog, STN, or Orbit. We find that searching IP is more of an art than a science where the more knowledgeable and experienced the searcher is, the more accurate and efficient the dynamic searching process becomes. Multiple information sources feed our search parameters, such as constraints generated from your disclosure, business, and marketing information. Because of our practical experience in business, marketing, research, IP law, and invention we can approach a search from many different points of view, which work synergistically towards discovering even the most purposefully obscured references.

An IP search is inherently a dynamic, recursive process that may expand across multiple online databases (e.g., international, periodicals, press, etc.) towards achieving a reasonable confidence level that most, if not all, relevant references in the searched databases were found. To form a patentability opinion copies of the references are ordered and analyzed.

Our Searching services

Trademark Related

Computer and Manual Trademark Search

Trademark Logo and Design Search

Patent Related

Patentability Search

Prior-art searches

Validity Search

Foreign Art Search

Marketing/Product Related

Infringement Search

Clearance search

Collection Search

State of the Art Search

Miscellaneous

Assignment/Inventor Search

What Search Reports Generally Include

Our search reports typically list the most relevant references (e.g., reference marks for trademark searches, or patents/publications for patent searches) found in our search wherein the most representative references include appropriate characterizing information, if any. Unlike many IP searching agencies who have little, if any, technical or legal knowledge, Bay Area IP increases the evidentiary value of your search report by stating in your report any caveats or contextual information critical to a proper analysis by your agent or attorney performing the opinion for patents or trademark opinion.

How Good Is a Patent Search?

Unfortunately, no one can guarantee a patent search, not even the USPTO. To provide you a service commensurate with your financial situation, we provide various levels of searching options, each providing different degrees of depth and breadth of our search. In our most basic search , our goal is to determine, with high confidence, if the exact invention has been previously disclosed in a patent. In our most comprehensive level of search we search patents and printed publications to determine, with reasonably high confidence, if the exact invention exist, or an obvious variation can be construed based on one or more prior-art reference in combination. A patentability opinion would then be rendered to advise you if you should proceed with a patent application. The corresponding cost can run from a couple of hundred dollars (e.g., if you did an extensive search and the patentability opinion is strait forward) to a thousand dollars (e.g., if you did not do an extensive search for a complex technical area where the patentability opinion is not strait forward) or more. In some cases, especially for very simple patents, a patentability opinion could cost more than simply preparing/filing the patent application without a patentability search. For clients on very limited budgets it often makes sense for them to do a preliminary online search, and then have us do a basic search combined with a patentability opinion as a basis for proceeding forward to draft/file a patent application.

Generally, when cost is not a top constraint the more time spent searching, up to some limit, and the broader the search scope, the more likely that we are to find substantially the same or similar prior-art that the examiner (who has a very limited time to search) will find, thereby significantly increasing the likelihood of a patent being awarded with a relatively clean prosecution history. However, because patent classes and subclasses are used in some aspects of the search, it is entirely possible that some very pertinent patents have been misclassified, and hence potentially missed. An additional level of uncertainty stems from the fact that only issued patents and published patent applications are searchable outside a patent office. A secret pending application may exist (for at least 18 months, and sometimes all the way until issuance) that the examiner could assert against your application. Other sources of missed references can arise from references (sometimes buried within hundreds) that are obscured by using non-standard terms and/or generic (or misleading) titles/abstracts, or figures. Some other search limitations arise from limitations in the USPTO database, which include the following:

Patents issued from 1790 through 1975 are searchable only by patent number and current US classifications.
Current US Patent Classification data in the Database may not necessarily match the classification data appearing in the original printed patent.
Changes to patent documents contained in Certificates of Correction and Re-examinations Certificates are not searchable.
Neither assignment changes nor address changes recorded at the USPTO are reflected in the patent database.

Thus, it should be clear that the effectiveness of any patentability search depends on many uncertain factors. Our searcher’s strong knowledge of patent practice and technology combined with excellent searching skills can significantly increase the accuracy and efficiency of the searching process. The exact choice of cost limits, search scope, and searching professional is made on a case-by-case basis depending on our client’s particular goals and risk tolerance level.

This page includes information regarding patent search, patent research, prior-art search, us patent search, patent searchers, intellectual property search, trademark search, and literature search