Practices / Patent Search

Filing and prosecuting a patent application is a time-consuming and costly procedure, especially a multinational patent application. A patentability search can help you, in this situation, to evaluate the possibility of an invention to be granted, and thus to determine whether to file a patent application. It can also help you to improve the invention based on the documents found, and therefore improve the chances of getting a patent.

Ideally, worldwide patents, patent applications, and non-patent literatures will be searched in a patentability search. But taking cost and time into consideration, worldwide patents and patent applications will be searched in a general patentability search, and non-patent literatures will not be searched, unless explicitly requested to do so, because non-patent literatures are not well-classified and managed, and the searching and obtaining thereof can be costly and time consuming.

Search report can be delivered in Chinese, English or Japanese within 3 business days in general.

You are highly suggested to conduct a patentability search if you:

  • want to evaluate the possibility of an application to be granted;
  • want to improve quality of an patent application; and/or
  • decide to file a multinational patent application.

A patent invalidity search, also called patent validity search, is an exhaustive prior art search conducted to identify patent and non-patent documents (prior art) either to validate the enforceability of a patent’s claims or to invalidate one or more claims of a patent.

Worldwide patents, patent applications, and non-patent literatures will be searched using comprehensive and value-added searching tools during an invalidity search.

Search report can be delivered in Chinese, English or Japanese within 5 business days in general.

You are highly suggested to conduct an invalidity/validity search if:

  • you are confronted by allegations of patent infringement;
  • a patent has been found in an FTO search or during patent watching, on which your products might infringe;
  • you intend to sue or send a warning letter to someone;
  • you are involved in a patent licensing negotiation (whether license out or license in); and/or
  • you would like to buy or sell a patent.

A freedom-to-operate search (FTO), sometimes called patent clearance search or patent infringement search, identifies granted patents and published patent applications on which your product or service may infringe. Depending on clients’ needs, the search scope may be limited by practice area and jurisdiction.

A freedom-to-operate search focuses on enforceable claims of granted patents or patent applications. It will help you to assess the risks relating to infringement of patents and patent applications, and in the case of possible risks, patent invalidity search may be conducted on the patents in question, design-around process may be initiated, or a license may be considered.

If the patent or patent application in question is a Chinese one, we can also provide you with a written opinion as to infringement risk with an additional fee.

Search report can be delivered in Chinese, English or Japanese within 10-20 business days in general.

You are highly suggested to conduct a FTO search if you:

  • plan to develop, manufacture, or sell a new product;
  • plan to import and sell a foreign product or export your new product to a foreign market;
  • plan to introduce a new production method or service; and/or
  • plan to invest in a company developing a new product or service.

Evidence of Use (EoU) analysis combines legal and technical analysis to help you identify potentially infringing products. EoU maps claim elements of a target patent to features of infringing products or services, by studying product literature, product specifications, figures, photos and sometimes the physical products themselves, to build up a full view of the comparison between the target patent and the products. EoU is critical when you plan to carry on a patent assertion activity or you consider a potential patent investment.

EoU report can be provided in the form of claim charts in Chinese, English or Japanese. Delivery date varies on a case-by-case basis.

IP due diligence focuses on the authenticity of right, value and risks associated with patents, trademarks, copyrights, and trade secrets. A party needs to get a complete view of its IP assets by doing IP due diligence when considering buying, selling, or in-licensing/out-licensing IP assets or when doing M&A transactions in which IP assets play an important role. IP Due Diligence involves a thorough investigation and examination of IP assets to verify or identify (1) their ownership, legal status and license information; (2) their technical and economic value; and (3) potential risks relating to the IP assets.

IP due diligence report can be delivered in Chinese, English or Japanese. Delivery date varies on a case-by-case basis.

Cost-effective and high-quality IP monitor services, including patent watch and trademark watch, can be provided on a periodic basis or on demand. Applicants/inventors, technological areas and/or specific patents of interest can be monitored.

Depending on the client’s specific needs, the watch results can be sent as they are for cost down purpose, or the watch results can be categorized according to the client’s pre-defined standard and a visualized report can be presented to facilitate identification of business opportunities and risks.

IP monitor report can be delivered in Chinese, English or Japanese on a periodic basis or on demand. If necessary, the monitor results can be delivered as soon as some patents or trademarks are published or the status thereof are changed.

You are highly suggested to conduct an IP monitor if you:

  • want to know the development or growth a specific technical area;
  • want to keep track of the IP activities of one or more competitors;
  • want to get alerted for a specific applicant or inventor;
  • want to update prosecution status information for a pending application; and/or
  • want to get alerted for expiration of specific patents.