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Intellectual Property Licensing

Comprehensive Prior Art Search for Patent Disclosure

Conducting thorough prior art searches requires searching multiple patent databases, analyzing hundreds of references, and assessing patentability—a process that typically takes attorneys 12-20 hours per disclosure. Manual searches risk missing critical references across international databases, non-patent literature, and related technical fields, potentially leading to costly rejections or inv...

Automation ROI

Time savings at a glance

Manual workflow16 hoursAverage time your team spends by hand
With CaseMark25 minutesDelivery time with CaseMark automation
EfficiencySave 38.4x time with CaseMark

The Problem

Conducting thorough prior art searches requires searching multiple patent databases, analyzing hundreds of references, and assessing patentability—a process that typically takes attorneys 12-20 hours per disclosure. Manual searches risk missing critical references across international databases, non-patent literature, and related technical fields, potentially leading to costly rejections or invalidated patents.

The CaseMark Solution

CaseMark automates comprehensive prior art searches across USPTO, EPO, WIPO, and technical literature databases, extracting key concepts from your disclosure and analyzing relevance against every claim. Receive a complete patentability report with tiered references, claim-by-claim analysis, and prosecution recommendations in under 30 minutes.

Document requirements

Required

  • Patent Disclosure Document

Optional

  • Preliminary Claims
  • Technical Drawings or Diagrams

Perfect for

Patent Attorneys and Patent Agents
In-House IP Counsel
IP Licensing Professionals
Patent Prosecution Specialists
Innovation and R&D Managers
Technology Transfer Offices

Also useful for

This workflow is applicable across multiple practice areas and use cases

Prior art searches are critical for defending patent infringement claims, supporting invalidity defenses, and assessing the strength of asserted patents in litigation.

IP litigators routinely conduct comprehensive prior art searches to challenge patent validity, prepare invalidity contentions, and evaluate litigation risk before trial.

Prior art searches are essential during M&A due diligence to assess the validity and strength of target company patent portfolios and identify potential IP risks.

M&A attorneys need to evaluate patent quality and enforceability as part of IP due diligence, which requires thorough prior art analysis to determine asset value and litigation exposure.

VC and PE investors require prior art searches during investment due diligence to validate startup IP claims and assess the defensibility of patent portfolios before funding.

Investment decisions often hinge on the strength of a company's IP assets, making prior art searches crucial for evaluating whether patents provide genuine competitive advantages and freedom to operate.

Prior art searches support patent strategy for pharmaceutical and medical device companies navigating FDA approval processes and patent term extensions under Hatch-Waxman.

FDA regulatory attorneys work closely with patent counsel to coordinate regulatory exclusivity with patent protection, requiring prior art analysis to ensure patent validity during lengthy approval processes.

Frequently asked questions

Q

How comprehensive is the prior art search compared to manual searches?

A

CaseMark searches all major patent databases including USPTO, EPO Espacenet, WIPO PatentScope, Google Patents, and relevant foreign offices, plus non-patent literature sources. The AI analyzes your disclosure to generate optimized Boolean queries, classification searches, and semantic searches that often uncover references missed in manual searches. Every reference is evaluated for relevance and impact on patentability.

Q

What databases and sources are included in the prior art search?

A

The search covers USPTO PatFT and AppFT, European Patent Office Espacenet, WIPO PatentScope, Google Patents, and relevant foreign patent offices (JPO, CNIPA, KIPO). It also searches non-patent literature including IEEE Xplore, Google Scholar, technical journals, conference proceedings, industry standards, and technical specifications relevant to your invention's field.

Q

How does the patentability assessment help with prosecution strategy?

A

The report includes a claim-by-claim analysis identifying the closest prior art for each claim element, novelty and non-obviousness assessments, and specific recommendations for claim amendments to distinguish from prior art. You'll receive guidance on which features to emphasize, suggested dependent claims, and arguments for overcoming anticipated rejections—giving you a clear prosecution roadmap.

Q

Can I use this report when filing a patent application?

A

Yes, the comprehensive report is attorney-ready and suitable for inclusion in prosecution files and client presentations. All references include complete citations, publication numbers, dates, legal status, and specific relevance explanations. The report meets professional standards for prior art search documentation and can support filing decisions and Information Disclosure Statement (IDS) submissions.

Q

How accurate is the AI relevance analysis compared to attorney review?

A

CaseMark's AI is trained on patent prosecution patterns and claim construction principles to evaluate technical overlap between references and your disclosure. While the AI provides highly accurate initial relevance scoring and identifies critical references, the report is designed for attorney review and final strategic decisions. Most attorneys find it catches references they would have found plus additional relevant art, saving substantial review time.