Читать книгу Intellectual Property Law for Engineers, Scientists, and Entrepreneurs - Howard B. Rockman - Страница 131

A further type of search, alluded to above, is the right‐to‐use search. This is also commonly called a validity search. This search attempts to answer the question “Even if it appears that the invention or device under analysis infringes another unexpired issued patent, is there a basis for determining that the potentially infringed patent is invalid or otherwise cannot or should not be enforced with respect to my invention?” Prior to initiating this type of search, the patent attorney normally analyzes how the potentially infringed issued patent was obtained by reviewing the prosecution history or “file wrapper” of the subject patent before the U.S. Patent & Trademark Office. This analysis includes an evaluation of the prior art applied by the Patent Examiner against the claims of the potentially infringed patent. Very often, in obtaining a patent and avoiding the prior art, the patent attorney, during prosecution of that patent and amending the claims, will represent to the Patent Examiner that the language and scope of the patent claims are somehow limited to specific structure or process steps not shown in the applied prior art. Such admissions by the patentee’s attorney in the prosecution history can be used to show that an accused device falls outside a particular claim limitation. The prosecution history analysis attempts to find these limitations, or loopholes, in the scope of protection of the potentially infringed patent. From the relevant communications and changes to the claims made by the attorney to the Patent Examiner in the prosecution of the potentially infringed patent, your attorney can determine whether or not your invention falls inside or outside the issued patent’s scope of protection.

Following such an analysis, if it is determined that your invention may still potentially infringe one or more claims of the issued patent in question, a right‐to‐use search is requested from a searcher in an effort to obtain prior art not considered previously by the Patent Examiner which would render the claims in question anticipated or obvious, and therefore invalid.