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Is providing "search services" (like patent search, patent landscape, freedom to operate analysis and so on) reserved to patent agents or patent attorneys or is it a service that any company can provide?

Is searcher accountable if she makes a mistake? Is it legal for searcher to provide service with a Limitation and Exclusion of Liability clause?

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Anyone can provide the services of a novelty/patentablity search or patent landscape report. However, a freedom to operate analysis is a different story. Even as a registered patent agent I am leery of freedom to operate.

It is clear that only an attorney (does not need to be registered patent attorney) can provide a freedom to operate opinion. That is an analysis of the likelihood of being sued for infringement and the likelihood of prevailing if sued. An attorney can't have liability waived by a client for professional errors therefore they are expensive.

Although a non-attorney might generate an analysis rather than an opinion, I think it is too fine a line and a client would take an analysis as an opinion. Of course search firms do freedom to operate searches (possibly with some analysis) for attorneys and the attorneys use that as the basis for an opinion.

A search company can limit its liability contractually - an attorney or agent can't in most locations.

In a novelty search it is pretty standard to have a disclaimer that no search by anyone is guaranteed to find everything. I heard a litigator give a talk to searchers and patent prosecutors. He said whatever combined time and effort is spent searching as part of a patent prosecution by the applicant and examiner, if the resulting patent is asserted, the time and effort spent to find prior art by the defense will be at least 10X.

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Searching is a highly debated process, and a lot of patent professionals will argue that you shouldn't do a search, or that you have to. I know that's not your question, but it's an important piece of the answer.

The short answers to your questions are: any company can provide a searching service, maybe, and yes.

Ultimately, the entirety of the burden falls on the filer, or filing attorney.

The standards for searching are pretty straight-forward:

  • You don't have to do a search.
  • If you do a search and find something, you have to tell the patent office.
  • If you submit too much, you can get in trouble for trying to hide relevant parts.

Anyone can do a search. I could do a search right now, just using some search engine. You don't have to be a patent professional to do that. People who know how to search often are professionals, but there's no requirement there.

Beyond that, the liability comes only through your contract with the provider. The USPTO is holding you accountable for what you give them, so if you fail to disclose something you find, that's on you, and not on the searcher. However, of course, if they're giving some sort of guarantee on their searches, you could then hold them liable for not pulling through.

To avoid that, yes, they could offer a contract that reduces their liability.

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  • How much of submitted prior art is "too much", to get me in trouble for trying to hide relevant parts?
    – Pol99
    Jan 20 '15 at 21:50
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    @Pol99 That's a pretty rare case, and it's only really relevant if you're submitting things that aren't relevant to the application. The issue there, of course, is that there can be some subjectivity in what is and is not relevant, but as long as you're thoughtful about what you submit, it shouldn't be an issue. Basically, don't do a google search for "chair" when you've got an improvement on a chair, and submit everything that comes back. It's also best not to be too redundant--once you've shown that something is prior art, you don't have to prove it three-fold. Jan 20 '15 at 22:04

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