Express Search Research Guide

Transcription

1 Express Search Express Search Research Guide Intellectual Property and Business Support Research Products ( ) (phone) Express Search is an ITAR Certified research partner registered with the US Department of State.

2 Table of Contents About Us Clearance/Freedom-to-Operate Research Novelty/Patentability Research Validity/Invalidity Research Sample Claims Comparison Chart Accelerated Examination Research Infringement Research Pre-Issuance Submission Research Re-Examination Research Post-Grant Research State of the Art/Landscape Research Non-Patent Literature Research Research Results Materials INPADOC Family and Legal Status Sample Amenities and Benefits Discounts and Ordering Agreements ( ) Projects@ExpressSearch.com (phone)

3 About Us EXPRESS SEARCH Research Expertise Express Search offers the highest quality patent research services available, specializing in complex prosecution and litigation oriented research, customized to client s needs. Despite the changing landscape of patent research, our lengthy tenure in the industry attests to our success as a leader in technical research preparation and attorney support. Express Search focuses individual attention to each case, fluidly managing large volumes of research while keeping costs to clients low. Industry Knowledge Patent research is the foundation for solid arguments, well-written opinions, and bulletproof applications. Express Search maintains a vigilant assessment of industry trends, pooling data from domestic and international sources, guiding the development of solid existing and innovative new research products. Customized Budgeting We encourage price point budgeting and basic ordering agreements to help manage short and long term account goals. Availability Express Search staff members are available evenings, weekends, and holidays, prepared to accommodate your schedule and to meet all your deadlines. Exceptional Research Staff Each researcher is hand-picked and handtrained, chosen for their specialized skill sets, research acumen and attention to detail. Each researcher undergoes a multi-stage training process, regular testing, formal research audits, and scheduled group and individual 3 training sessions. Researchers maintain command of the latest innovations in their scientific specialities in addition to the latest patent research tools and methodologies. A listing of our esteemed research staff and their qualifications are published on our website or available upon request. Flagg Management Family run, Express Search is now in its second generation of management. President Cristopher Flagg is a computer scientist specializing in robotics and artificial intelligence with over twenty years experience in patent research and research management. Executive Director Rodger Flagg founded Express Search in He continues to lend his 30 years of industrial experience in engineering, inventing, patent research, drafting, and prosecuting. Client Partnership At Express Search, we consider our clients our partners. We are invested in their success and satisfaction. As partners, we understand that a level of decorum and professionalism is expected for successful docket and portfolio management. Timely, cost-effective, quality results, as well as direct access to management, are requisite standards for busy and conscientious counsel. Each case is unique. The research and budget supporting each case should likewise be treated as unique. Customization of a research project is an integral part of our successful client research partnerships. Welcome to Express Search Express Search invites you to contact our offices to discuss all of your research requirements. ( ) Projects@ExpressSearch.com (phone)

4 Clearance/Freedom to Operate Research How is Clearance Research Used? Clearance research ( Freedom to Operate or Right to Use research) is a fundamental element in opinion drafting and a key business tool for corporate management. Express Search offers detailed clearance research allowing our clients the flexibility to focus on drafting opinions, amendments, and briefs while having made due diligence requirements. Clearance research has become a standard method of judging product value in the intangible asset marketplace. Patent portfolio management utilizes clearance research at multiple stages, including preparation for purchase or sale of portions or whole patent portfolios. How is Clearance Research Conducted? Clearance research includes an infringement search in addition to searching expired patents that may provide a safe harbor for a specific product, process, or service. Our researchers address both infringement and novelty concerns with the ultimate goal of giving the client the ability to offer a solid legal opinion regarding the barriers to entry into a particular field of technology or market. Search Results Include: Opinion-free comments Keyword searchable patents Current PAIR assignments Current INPADOC patent family and legal status Electronic results Free shipping and free electronic patent copies Free research estimate and conferencing 4 Clearance Research Fees Cost: $115 per hour Recommended hours: 24 Scope: 20 to 60 patents (active and expired) The disclosure is measured against the claims of the cited prior art. This eliminates references that could be included in patentability results that do not specifically teach the client s invention. The end result is a highly focused body of prior art whose claims read on the disclosure provided. The researcher covers the earliest art to the most recent inventions, including US and foreign patents and applications. Non-patent literature may also be included to provide an additional scholarly overview of the field of technology. Express Search clearance research includes both the search results as well as diverse legal status information for each of the cited references. Opinion-free comments include column/line/figure and claim references which point clients directly to the most important features of the art. Coupled with keyword searchable electronic patent copies, clients can quickly and accurately prepare their clearance opinions with confidence. Additional assignment data is included to enable complimentary analyses. Who Benefits from Clearance Research? Key beneficiaries of this product range from small start up companies requiring information and analysis of their market options to established corporations looking to increase product lines. Additionally, venture capital and grant organizations are requesting clearance opinions as a basis for funding allocation, renewal, and in determining the viability of a venture. Clearance research provides a solid foundation for the valuation of a patent or product with a specific focus on competing intellectual property. ( ) Projects@ExpressSearch.com (phone)

5 Novelty/Patentability Research Novelty/Patentability Research Fees Mechanical/Design: $695 Electrical: $795 Software/Business Methods: $795 Chemical/Biomedical: $895 Scope: up to 20 patents Hourly Research Fees Hourly Novelty: $115 per hour Recommended hours: 10 Scope: up to 20 patents How is Novelty Research Used? Novelty research provides clients with information used to form patentability opinions and subsequent application drafting and submittal. This research helps to identify the patentable novelty of an invention. Substantial and new criterion requirements regulate patentability, thus sufficient distinction must be recognized in the eyes of the Examiner, as opposed to slight changes in process or mechanism, according to regulations governing the definition of patentability. directly to the most important features of the art. Coupled with keyword searchable electronic patent copies, clients can quickly and accurately prepare their patentability opinions with confidence. Express Search accounts for regulation changes as a result of the legislation and changing practices by offering the best supportive documentation upon which a client can draft a solid opinion. Who Benefits from Novelty Research? Novelty research is typically required in conjunction with the corporate evaluation of new and potential products during the initial stages of prosecution. A well crafted novelty search can save time and money later in the prosecution cycle. Novelty research benefits those with new intellectual property ventures and provides a good overview of the patents relating to a potential product or design. With the changing regulations governing what is patentable, reliable research is a requirement for practitioners attempting to expand their client s portfolios with solid assets. How is Novelty Research Conducted? Novelty research is intended to provide a general overview of the art for a particular invention. The client s disclosure is compared to the prior art and the most similar patents in form and function. While this search is not intended to be as exhaustive in scope as other research, it does provide the required depth to render a strong patentability opinion. Opinion-free comments include column/line/ figure and claim references to point clients Search Results Include: Opinion-free comments Keyword searchable patents Current PAIR assignments Current INPADOC patent family and legal status Electronic results Free shipping and free electronic patent copies Free research estimate and conferencing 5 ( ) Projects@ExpressSearch.com (phone)

6 Validity Research Validity Research Fees Cost: $115 per hour Recommended hours: 24 Scope: 20 to 60 patents Claims Comparison Chart included * Opinion-free comments include column/line/ figure and claim references to point clients directly to the most important features of the cited art. Coupled with keyword searchable electronic patent copies, clients can quickly and accurately prepare their validity arguments. How is Validity Research Used? Validity research is a useful weapon in an IP practitioner s arsenal. While validity research is primarily used to determine the strength of a patent with regard to litigation or re-examination, it is also a valuable tool for evaluating elements of a patent portfolio. Validity research can assist in preparing for and succeeding in litigation. Likewise, economic pressure has resulted in new corporate reviews of IP portfolios. Decision-makers are debating more aggressive usage of their existing IP assets or the purchase of new, key IP assets. Validity research adds pertinent information to the formation of corporate patent valuation strategies. The fundamental requirements of these assessments dictates the greatest attention to detail and thoroughness of research. How is Validity Research Conducted? Validity research is used to establish the enforceability of an issued patent in court or before the USPTO. The claims of the subject patent are compared with prior art references published before the critical date, often the filing or priority date, of the subject patent. A Claims Comparison Chart is provided with results to visually represent the relationship between cited prior art and the most important claimed elements. Express Search validity research includes both detailed research results as well as legal status information for each of the cited references. 6 Non-patent literature may also be included to provide an additional scholarly overview of the field of technology. Who Benefits from Validity Research? The strength of a patent has shifted from issuance to enforceability. The cost to invalidate a collection of weak patents is much higher than the cost to litigate a single strong patent. Companies are able to leverage the number of patents within a portfolio to overcome the reduced strength of individual patents. Express Search validity research benefits clients looking to manipulate intangible asset portfolios in litigation, valuation assessments and re-examination before the USPTO. Search Results Include: Claims Comparison Chart Opinion-free comments Keyword searchable patents Current PAIR assignments Current INPADOC patent family and legal status Electronic results Free shipping and free electronic patent copies Free research estimate and conferencing ( ) Projects@ExpressSearch.com (phone)

7 Sample Claims Comparison Chart Claim Elements are identified from the most important claims of the subject patent (as identified by the client) to create a custom chart that visually displays the importance of the most relevant patents cited in our results. Prior Art Relevance is displayed in tabular format to provide insight into the importance of the cited prior art without rendering an opinion. US Patent 5,322,624 has claims that relate to claim elements A, B, E, and F of the subject patent. Searchable Patents by keyword allows you to quickly locate element numbers and key features in all the patents cited. 7 ( ) Projects@ExpressSearch.com (phone)

8 Accelerated Examination Research Accelerated Examination Research Fees Cost: $115 per hour Scope: up to 20 patents Recommended hours: Initial Search: 24 hours Update prior to filing: 6 hours (optional) Update based on Examiner s response to petition: Included Update in response to amended claims: 6 hours How is Accelerated Examination Research Used? termine the likelihood of gaining a PCT application. PCT applications filed under 35 USC 111 (a) are eligible for Accelerated Examination filing, while a PCT application filed under 35 USC 371 is not eligible (but its subsequent Continuation is eligible). It is also common to file Continuations with accompanying Accelerated Examination petitions. As it is not permissible to file an Accelerated Examination for an existing application, using the expedition petition on a subsequent Continuation has become useful. Certain qualifying patent applications currently in process may be well served by filing a Continuation with an Accelerated Examination petition, in the hopes of expediting the entire case. The goal of decreased pendency and increased efficiency at the USPTO has resulted in procedural changes based on burden-sharing, particularly with regard to research. Accelerated Examination filing has been used for both legal and business decisions, growing in benefit as its procedures become more familiar to the USPTO and practitioners. How is Accelerated Examination Research Conducted? Initial Search: The initial search consists of an extended novelty search including both patent and nonpatent literature, where the search strategy is reported using a Pre-Examination Search Document. The Pre-Examination Search Document Alternative Uses: Consequently, practitioner s have found numerous ways to utilize Accelerated Examination filing in addition to expediting special prosecution. Some use Accelerated Examination filing as a testing ground for PCT filing. As PCT filings are expensive, one may file the US application as an Accelerated Examination filing. There is a one year spread between filing the US application and filing the subsequent PCT application. Initial discussions with a USPTO Examiner on an Accelerated Examination can indicate how likely allowance of a US patent will be, and thus de- 8 Search Results Include: Pre-Examination Search Document (including field of search and search strategies) Opinion-free comments Keyword searchable patents Current PAIR assignments Current INPADOC patent family and legal status Electronic results Free shipping and free electronic patent copies Free research estimate and conferencing ( ) Projects@ExpressSearch.com (phone)

9 requires little modification by the client prior to submission. The search is based on both a classification search as well as a keyword search of patent and non-patent literature. The art of conducting this research is based on selecting the keywords from the specification and claims. It is important to have consistent and well-crafted keyword search strategies across all keyword searching. Search Update Prior to Filing: Due to the close relationship between the keyword search strategy and the application as filed, we strongly recommend an update to the initial search based on any changes made to the disclosure and/or claims. Keywords or concepts added to the application after the initial search are routinely noted by the Examiner during review of the Petition. Search Update Based On Examiner s Response: We then review the concerns expressed by the Examiner and modify the search accordingly, supplying a modified search report and new Pre-Examination Search Document. The dismissal of a Petition is as common as a first Office Action rejection. Express Search includes an update to the Petition at no additional charge. Search Update Based On Amended Claims: Finally the Examiner may require the Pre- Examination Search Document be updated prior to the patent s allowance, which Express Search will update at the direction of the client for an additional authorization. Results Include: Our search report includes the US and IPC classes and subclasses searched as well as the search strategy used for all text searching of both patent and non-patent literature. We include a listing of all external databases referenced in the course of the search. This format is suitable for inclusion in a Pre-Examination Search Document as outlined by the USPTO. Our search results provide comments on the cited prior art designed to meet the IDS Requirements of Identification under 1.98(a)(3)(iv)(A). We disclose, where appropriate, the column/line/ paragraph/figure and claim causing citation. We guarantee that this pre-examination search will be considered sufficient to support a Petition for Accelerated Examination. If there are any specific USPTO identified deficiencies that require further research by the applicant, Express Search will update the pre-examination search at no additional charge. The additional IDS requirements for correlation under 1.98(a)(3)(iv)(B) and for non-cumulative description under 1.98(a)(3)(v) relate to specific claim language and are outside of the scope of our search results. The requirements for patentability justification under 1.98(a)(3)(vi) varies based on the period in which the IDS is filed and are also outside the scope of our search results. Who Benefits from Accelerated Examination Research? A growing number of companies are pushing for counsel to file Accelerated Examination Petitions in order to avoid the estimated six year examination backlog in some art units. Clients who benefit most from this research typically have both legal and business motivations, wherein it is a part of a larger corporate portfolio strategy. Critical applications may be filed normally and subsequently moved to the head of the queue by filing a Continuation through Accelerated Examination when business conditions require immediate protection. Many practitioners file several smaller applications with Accelerated Examination Petitions in lieu of a larger single application with many claims, such as including method claims in one Continuation and apparatus claims in another Continuation. Under this strategy, a portion of the Accelerated Examination Petitions may be accepted ensuring some coverage for the technology within the first year of filing. 9 ( ) Projects@ExpressSearch.com (phone)

10 Infringement Research How is Infringement Research Used? Infringement research is used to locate any unexpired patents that would bar the manufacture, use, or sale of a specific product, process, or service. It can assist in determining legal positioning between close competitors or as supporting data for underwriting during the licensing process. How is Infringement Research Conducted? We search for unexpired patents that have restrictive claims, identifying patents whose claims read on the disclosure provided. Infringement research is based on a description, not a set of claims. Sometimes the description is based on the specification of a patent, and other times it is based on trade or marketing material. We include patents which have some claim material that read on the disclosure for the benefit of the client s full assessment. We also include patents which have strong support in the specification for the invention. Infringement Research Fees Cost: $115 per hour Recommended hours: 18 hours Scope: 20 to 40 patents This gives the client the option of judging the strength of the patent. This may lead to alternative action based on the patent file wrapper as sometimes Examiner Office Actions include reasons for restricting claims that would read on the patent. A complimentary integrated assignment search, coupled with a non-patent literature search for an additional fee is recommended to round out the results set and offer the maximum amount of information for various infringement-oriented actions. Who Benefits from Infringement Research? Manufacturers looking to introduce products into the marketplace who are not looking for safe harbor in expired patents, but rather exploring potential liability, rely on infringement research as the basis for opinion drafting on the likelihood of litigative exposure in relation to new product lines. Search Results Include: Opinion-free comments Keyword searchable patents Current PAIR assignments Current INPADOC patent family and legal status Electronic results Free shipping and free electronic patent copies Free research estimate and conferencing Likewise, companies with close competitors may wish to monitor activity within a closely related field of technology to assess both infringement issues as well as competitor s attempts to invent around a given company s intellectual property. Infringement research offers in-house counsel basic information for strategic decision-making in litigation and R&D issues. Licensing processes benefit from infringement research with regard to underwriting, especially for non-profit research organizations in research/grant cycles. 10 ( ) Projects@ExpressSearch.com (phone)

11 Pre-Issuance Submission Research Pre-Issuance Submission Research Fees Cost: $115 per hour Scope: up to 20 references Recommended hours: Patent Portion: 24 hours Non-Patent Literature Portion: 8 hours How is Pre-Issuance Submission Research Used? Pre-Issuance submissions allow patent applicants and challengers the opportunity to manage risks and mitigate potential infringement concerns before issuance. The AIA includes provisions to permit third parties to submit information that is relevant to the patentability of pending applications. The mechanism provides an avenue for third parties to reduce the likelihood of a pending application issuing with problematic claims, and to avoid the potential expense of litigation. Pre-Issuance submission is an inexpensive mechanism for limiting competitor patent scope. may submit a document already of record and present new argument regarding the document and its relevance. Patent challengers should note that because the USPTO has no duty to inform the public before mailing a notice of allowance or an office action, pre-issuance submissions should be made as early in the process as possible. Who Benefits from Pre-Issuance Research? Patent applicants will benefit from additional monitoring of newly published applications during the examination of a patent application, rather than to be confronted with the prior art while trying to enforce a patent granted on the application. Pre-issuance submissions can be a relatively inexpensive way to limit the scope of a competitor s patent claims and potentially prevent a competitor from obtaining any patent at all. Strategic use of pre-issuance submissions can provide additional, and early, certainty regarding product clearance and risk associated with a pending patent application. How is Pre-Issuance Submission Research Conducted? Monitoring of newly published applications and prior art searching by third parties can potentially invalidate claims and generate prosecution history estoppels early in examination. Pre-issuance submission research provides patents, published applications, or other printed publications of potential relevance to examination, including post-filing publications such as scientific journal articles or court records that provide insight as to whether the claims in the application were patentable at the time that the application was filed. In addition, a challenger Search Results Include: Opinion-free comments Keyword searchable patents Current PAIR assignments Current INPADOC patent family and legal status Electronic results Free shipping and free electronic patent copies Free research estimate and conferencing 11 ( ) Projects@ExpressSearch.com (phone)

12 Re-Examination Research How is Re-Examination Research Used? The re-examination process is a popular costeffective alternative to litigation, a tool to publically limit claim scope of issued patents and to create litigation estoppels. It can set the groundwork for inequitable conduct claims and has a number of other legal uses. Re-examination can also be requested by a patent holder to review art discovered postissuance, as a due diligence measure and to publically ensure validity of the issued patent, useful for valuation purposes during portfolio management, M&A preparation, or general corporate audits. How is Re-Examination Research Conducted? We relate the art we cite to the claims of the subject patent. Likewise, we review the art cited in the original invention disclosure and on the cover of the patent to consider what elements were not given strong focus during the original examination. Both the art cited in our search results and the original art cited on the face sheet of the patent are charted on a customized reexamination comparison chart. Re-examination results include a chart that graphically displays the art supplied by the client in the IDS as well as the art cited by the Examiner and our results in three tabs against the claims of the contested patent. Public domain documentation can be integral in defending or defeating a patent during the re-examination process. Our researchers are skilled at identifying the right non-patent literature in the most cost effective manner possible, typically with minimal to no database charge options using federated databases and USPTO-encouraged templates. 12 Re-Examination Research Fees Cost: $115 per hour Recommended hours: 30 hours Response update: 6 hours Scope: 30 to 90 patents Who Benefits from Re-Examination Research? Patent holders defending portfolio integrity during a request for re-examination generally require information to help analyze a targeted patent s position within the defense through detailed and goal-focused research. Inter-parte requesters require specific research support throughout the entire re-examination process. The search results can be levied in on-going litigation, reducing court time to legal arguments with an assumption of technical validity in place. Particular business models, such as software or business method based corporate portfolios, typically find re-examination research most useful, whether defending or filing a request. Search Results Include: Re-Examination Chart including analysis of art cited by patent Opinion-free comments Keyword searchable patents Current PAIR assignments Current INPADOC patent family and legal status Electronic results Free shipping and free electronic patent copies Free research estimate and conferencing ( ) Projects@ExpressSearch.com (phone)

13 Post-Grant Review Research How is Post-Grant Review Research Used? Post-Grant Review (PGR) research is a procedure introduced under the AIA that provides a third party challenger the ability to request a PGR of an issued patent during the 9 month window following the issue date of the patent. One important aspect of the new PGR is the broader grounds and forums for legal estoppel. Estoppel exists for any ground that was raised or reasonably could have been raised during PGR. Since the available grounds for requesting a PGR are all grounds of invalidity, that would otherwise be available in litigation, an estoppel could preclude an accused infringer to raise any invalidity defense during litigation. The main consequence of this legal estoppel is that a third party requester must do their homework before filing a request for PGR to present all reasonably available defenses. How is Post-Grant Review Research Conducted? PGR research is used to establish the validity of an issued patent before the USPTO. Each claim challenged in the subject patent is identified, as well as the grounds on which the challenge to each claim is based. Post-Grant Review Research Fees Cost: $115 per hour Recommended hours: 24 hours Response update: 8 hours Scope: 30 to 90 patents Who Benefits from Post-Grant Review Research? The PGR closely parallels an European Patent Office opposition except the real-party-ininterest of the PGR must be identified. Initiating PGR will be straightforward. The challenger petitions the Board to initiate a proceeding. The process is intentionally designed to move disputes out of the courts and back into the Patent Office. Under the US laws, an invention may be entitled to a patent despite an earlier disclosure of the invention which qualifies for the one-year grace period afforded to inventors. In contrast, the European requirement for absolute novelty means that any prefiling disclosure effectively bars patent claims. The third party can challenge the novelty, non -obviousness, sufficiency of the description or patentability eligibility. Novelty and nonobviousness can be challenged based on patents and publications or other forms of public disclosure. The request must establish that it is more likely than not that at least one of the claims challenged is unpatentable. Express Search PGR research provides evidence that supports the grounds of novelty and non-obviousness for each claim challenged. Such evidence may include patents, printed non-patented publications, affidavits, declarations as well as evidence of public use, on sale or other forms of public disclosure. 13 Search Results Include: Post-Grant Review Chart Opinion-free comments Keyword searchable patents Current PAIR assignments Current INPADOC patent family and legal status Electronic results Free shipping and free electronic patent copies Free research estimate and conferencing ( ) Projects@ExpressSearch.com (phone)

14 State of the Art/Landscape (Whitespace) Research State of the Art Research Fees Cost: $115 per hour Recommended hours: 14 Scope: 20 to 120 patents Landscape Research Fees Cost: $115 per hour Recommended hours: 24 Scope: 20 to 120 patents How is State of the Art and Landscape Research Used? State of the Art research provides an overview of a field of technology. It is an important tool in the R&D and product development process. State of the Art research offers clients the best and most current estimation of technological innovation to focus corporate research strategy, determine areas of licensing, and gather industry information. Patent Landscape research has been a relatively flexible tool, due in part to an increased need for patent research as an aid in critical business decision-making. Landscape results identify key areas where the target technology is most heavily represented, who the main assignees are, and what facets of the technology are least protected. State of the Art research within the analytical guidelines of a Landscape framework offers clients the most customized and detailed information available to make business decisions. How are State of the Art and Landscape Research Conducted? State of the Art research compiles references that show functionally equivalent means of accomplishing a similar result, providing a representative sample of cutting-edge prior art. Express Search compiles the most pertinent information into an accessible format for client 14 referencing and cross-referencing. Our Landscape format offers flexibility for both a birdseye view of technology, as well as a focused review of specific aspects of the cited art. A Landscape document is prepared independently to provide a visual representation of the state of the art and technology. It groups the most important features of the disclosure and relates them to art cited. Who Benefits from State of the Art and Landscape Research? Counsel for start up companies or corporations with large R&D initiatives and new product lines are well served by both State of the Art research or a State of the Art/Landscape combination. Additionally, technology transfer offices, universities, and federally-granted research foundations have found a review of their research and its position in the market useful to the grant process. Clients generally benefit from this research during business plan development, annual R&D reviews, budget planning, and pre-product line release analysis. Search Results Include: Prior art charted by feature, assignee, and issue date (Landscape research only) Opinion-free comments Keyword searchable patents Current PAIR assignments Current INPADOC patent family and legal status Electronic results Free shipping and free electronic patent copies Free research estimate and conferencing ( ) Projects@ExpressSearch.com (phone)

15 Non-Patent Literature Research How is Non-Patent Literature Research Used? Non-patent literature provides similar benefits to patent prior art during prosecution, litigation, and re-examination proceedings. Scholarly articles and documents within the public domain are an ever-increasing presence in the realm of intellectual property, as well as a growing requirement under new legislation. Relevant articles can be efficiently located to provide support for intellectual property endeavors, from validity to clearance research. These articles point out key elements that were known to those skilled in the art prior to a patent s publication and provide insight into the development of cutting edge technologies. How is Non-Patent Literature Research Conducted? The viability of non-patent literature as an aid to patent research has greatly increased over the past decade with the maturation of online data collections. It was recognized that when conducting nonpatent literature research the major limitation was not on the time spent doing the research, but rather the cost of accessing the standard databases. Database developments vis-à-vis federated databases provide relative accessibility to scholarly publications. In most cases, it is possible to locate highly relevant non-patent literature without incurring database costs. The advent of federated databases, coupled with an experienced background in non-patent literature research and its diversified search strategy formation, offers an alternative to sole reliance on standard subscription database research and its associated cost. Express Search utilizes both subscription and free databases, depending upon the field of technology and individual case requirements. Our researchers are skilled at identifying the right non-patent literature in the most cost effective manner possible. 15 Non-Patent Literature Research Fees Cost: $115 per hour Recommended hours: 6-12 hours Scope: 6 to 20 documents We have successfully provided Accelerated Examination Pre-Examination Support Documents based entirely on free databases. These databases highlight a widely available pool of free information. Who Benefits from Non-Patent Literature Research? All patent research may benefit from the inclusion of non-patent literature with standard patent prior art. It provides a window into the field of art that can strengthen claims of novelty and enforceability. USPTO initiatives to reduce Examiner workload, along with the increased availability of non-patent literature resources, will dictate an increased role for non-patent literature in the intellectual property arena. Express Search has refined the process from both a research and cost-benefit perspective, offering a thorough, detailed, and professionally viable addition to traditional patent research results. Search Results Include: Opinion-free comments Electronic results Copyright cleared articles available through copyright holders at additional cost* Free research estimate * Literature bibliographic information including abstracts and full text when copyright cleared and available. Authorization is required for order of full length articles with cost estimate in advance. ( ) Projects@ExpressSearch.com (phone)

16 Research Results Materials Quality Results Three Tiered Review Process: Each piece of research undergoes a rigorous three-tiered review process to ensure the highest quality and sharpest focus of results. An initial review of the disclosure is conducted wherein the search is reviewed within the context of its area of technology and the most appropriate researcher is assigned and instructed. Clarification may be requested on technical details at this stage, including functions such as conference calls with inventors/engineers, in order to ensure the most thorough results. A secondary review is conducted after the search is completed, to check the appropriateness, thoroughness, and scope of the cited prior art. A final review is conducted to ensure that all elements of the search request were completed to specification, that the report and all supplemental materials are complete and professional. A post-reporting review of research occurs to assist in answering questions or concerns, or to provide additional documentation or information to a client in light of their review of data. Reports: All Express Search research products come with a standard, clearly defined results report stating: the scope and focus of the search the Examiners and Art Units consulted during the course of the search the USPC/CPC and IPC classes and subclasses searched a listing of citations and their non-opinion comments in a ranked order of importance based on 102 and 103 considerations. The results report is appropriately formatted for immediate consumption, addition into the 16 file wrapper, and sharing with colleagues and clients. Supplemental Data: Supplemental information is vital for quality results. Additional information, such as INPA- DOC patent family and PAIR assignments on cited references can add considerable value. For example, patent family information can give details regarding corporate trends in a given technology. Tracing CIP or foreign filings in a given patent family, which patents were allowed to expire, and where patents are enforced, can indicate historic business or portfolio strategy trends. This data can reveal the level of competition in domestic and foreign markets for a given technology by a given patent family member, their use of legal tools, and the flow of assignments. Tools: Electronic results delivered via secured electronic download or CD make manipulating, sharing, and storing your research simple and cost-effective. We are always amenable to forwarding complimentary copies to your colleagues or clients at your request. Keyword searchable patents allow you to quickly manipulate your results to hone in on the information you need, all in standard Adobe format so there is no 'learning curve' with new software. Customization: Research scope, case budget, turnaround time, and detailed reporting customization is available and encouraged depending upon client and case needs. Availability: The Express Search staff is available to assist during business hours, evenings, weekends, and holidays to accommodate every schedule. Expedited turnaround times and last-minute conference calls are considered part and parcel of our services. ( ) Projects@ExpressSearch.com (phone)

17 INPADOC Family and Legal Status Sample INPADOC Legal Status shows specific status of family members. The family page provides links to issuing authorities to verify individual patent status. Graphical depictions of patent families for information on countries of filing and INPADOC Legal Status. Events in the life of a patent, such as expiration due to failure to pay maintenance fees, provide vital background when evaluating results. 17 ( ) Projects@ExpressSearch.com (phone)

18 Amenities and Benefits Free Amenities Our goal is to best prepare you for your business and legal efforts. Customized budgets and free estimates allow you to best allocate funds and stay within budgets. Free conference calls ensures both parties are working in chorus toward the most effective results. Free shipping and patent copies mean that the estimated cost is the actual cost. Integrated Assignment Research Express Search is happy to accommodate custom assignment research for free. Integrated assignment research on companies or entities of interest is reported in conjunction with the requested patent research results, broken down by assignee, and focused on the subject technology. Prosecution-Specific Materials Preparation Accelerated Examination filing requires specific documentation including a Pre-Examination Search Document. Express Search drafts these documents during the course of an Accelerated Examination search, and updates them during the Amendment cycle. Pre-filing patentability updates for minimal or no cost are useful ways of ensuring the solidity of an application, particularly if changes were made to the disclosure during drafting. Litigation-Specific Materials Preparation Litigation requires alternate and additional materials for preparation, e.g. Claims Comparison charts for validity or invalidity research. Additionally, re-examination and PGR research requires charted data as well which is included in the results package at no charge. C h e m i c a l Sequencing Materials S t r u c t u r e / G e n e STN chemical structure or gene sequencing data, including CAS records and optionally the identified chemical structure image, allows for the most detailed review of a chemical case. An estimate for database costs will be given in advance of data retrieval for authorization. Orange Book Research The Orange Book is produced by the FDA and includes New Drug Application (NDA) approvals, generic product Abbreviated New Drug Approvals (ANDA), product and exclusivity changes as well as patent information. Express Search offers Orange Book research in a patent landscape layout. Orange Book specifications allow for a more detailed set of criteria for a patent search allowing for compounds, compositions, and indications to be more simply compared and contrasted during analysis. ITAR Compliant Research Express Search is proud to be an ITAR (International Traffic in Arms Regulations) Compliant Research Partner with the US State Department (registration code M31222). We are equipped and prepared to handle all research for designated export controlled technologies and can supply all pertinent documentation to you and your client toward compliance. 18 ( ) Projects@ExpressSearch.com (phone)

19 Discounts and Ordering Agreements Competitive Pricing Express Search offers competitive pricing on all of its research products. We prefer to tailor the research results to the specific scope and budgetary requirements of each individual request. We recommend flat rates for ease of quoting and budget formulation, however these rates are flexible dependent upon the case needs and specific goals for the research. We understand that each client and each case is unique, and thusly we offer competitive and flexible pricing to meet every project and every budget. Express Search is proud to relate that its pricing has not increased since 2007 in support of our clients in response to economic strains, and we are happy to relate that we will not be increasing price during the period. We have been able to maintain this fee structure primarily through internal proprietary software automation innovations and an emphasis on multiple layers of quality control and review. The higher the quality of review, the better the research. The better the research, the more clients we gain and maintain. Bulk Discounts Express Search offers bulk discount rates beginning on orders of 3 or more pieces of research at any one time. Contact our offices to discuss how a bulk discount might assist you and your client in maximizing your research budget. Basic Ordering Agreements Basic Ordering Agreements (BOAs) are available upon request. Express Search offers a standard BOA offering a sliding percentage discount based on monthly and quarterly volume. BOAs apply to whole firms, companies or entities, thus volume is derived from aggregate research orders from multiple attorneys and agents in a single group. There is no minimum monthly or quarterly obligation, and discounts are automatically applied during a pre-set billing cycle. BOAs are most useful in meeting client research price points and locking in research rates for long periods of time. Counsel will find a BOA most beneficial during new product rollout analysis periods where large numbers of patentability or clearance research may be needed. Contact our office to discuss how a BOA can help plan and manage research budgets. Referral Discount Program The Express Search Team is always so grateful for a referral. As a token of gratitude, we offer a referral discount to be used on subsequent research. Please contact our office to learn more about the referral discount program and how much we appreciate a good word. Annual Promotional Discounts Each year Express Search offers various promotional discounts. Our annual year-end Docket Clearing event has become popular, helping clients for years to clear off their desks over the holiday period. Contact us to find out when the next promotional discount is occurring and how you can take advantage of it. 19 ( ) Projects@ExpressSearch.com (phone)

20 tegrated Assignment Research Express Search, Inc. Phone: Fax: EXPRESS SEARCH and the Express Search Logo are registered trademarks of Express Search, Inc. All other trademarks are property of their respective owners. The Express Search Research Guide is copyright Express Search Inc.,