Business Owner Patent Due Diligence

Often filing for patents are a part of business formation or expansion. A patent is a property right granted by the United States Patent and Trademark Office, to an individual, in order to protect a specific invention for approximately 20 years. As a legally enforceable status, proper due diligence is required to ensure a previously existing patent would not be infringed upon by a new one. Recently, The National Law Review discussed due diligence and how best to conduct research on existing patents.

The first place many go to when conducting a patent search is the Patent Application Retrieval System (PAIR). PAIR is a system that shows the status of patent applications. The system has both a public search area and a private one. The public search will display published or issued applications only. To search on the public system, a patent, application, or publication number is necessary. The private search is only open to specific registered individuals, such as an attorney, agent, or those deemed to be an independent inventor. The advantage to searching the private PAIR database is that it gives access to real-time status’ of pending applications.

The National Law Review points out a common pitfall of searches is not reviewing patent proceedings before the Patent Trial and Appeal Board (PTAB). A PAIR search will not provide information on whether a patent has been subject to a hearing on issues such as a Covered Business Method, Inter Partes Review, or Post Grant Review. Although some commercial databases may display information on such hearings, at times it may take a longer period of time to post. The Law Review emphasized the importance of reviewing patents that have been before PTAB for a hearing, whether or not the claims were upheld. In reviewing how PTAB viewed the patents before them, individuals conducting due diligence can discern the strengths and weaknesses of their own application for a patent.

If you are starting a new business, or if you already own a business and would like to apply for a new patent or need to defend against a patent claim, the advice and counsel of an experienced business law attorney is vital. Contact the experienced attorneys at Blodnick, Fazio & Associates, P.C. for a free consultation by calling (516) 280-7105.

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