Searching the public records of the U.S. Patent and Trademark Office (USPTO) website for intellectual property collateral is becoming standard for many deals that include UCC due diligence.
Due to the increasing value and importance of trademarks and patents in secured transactions, lenders often accept, and some may require, intellectual property (IP) as loan collateral and thus insist on the proper perfection of their security interest in IP on the public record. Uncovering security interests and understanding the priority position of lenders in this intangible collateral is critical. However, a UCC search of the central filing office may not be enough since specific IP properties are typically not itemised on UCC financing statements but could be secured within a general collateral description of “all assets”.
Critical insight can be gained by searching for filings at the USPTO, but the truth is that finding trademark and patent information on the USPTO website can be tedious and many searchers simply do not have the expertise to complete an accurate and thorough search. To do it right, you need to be familiar with how the USPTO website is organised, boolean search logic and the USPTO’s changing data entry protocols, as well as, being patient enough to review a long list of possible search results, identify the relevant results and organise this information into a clear, logical format.
The U.S. Patent and Trademark Office Website
Before starting a search, it is important to understand that the USPTO website is separated into trademark and patent ‘silos’. Within those two silos, each database is further broken down into additional areas containing multiple search fields. Consider devising a search strategy in advance that covers the following sections:
- Pending and Registered Trademarks
- Trademark Assignments
- Published Pending Patents
- Patent Grants
- Patent Assignments
Are Names Misspelled in the USPTO Databases?
Yes. When data is manually keyed into a system over an extended period of time, especially by the public, keying errors are inevitable. Searchers should be aware of this and consider conducting searches on some of the more common errors.
Common misspellings include reversal of letters ('retrieve' vs. 'retreive') and dropped double letters (‘dropped’ to ‘droped’). Use of British rather than American spellings, such as ‘colour’ instead of ‘color’, can also result in missed hits. Combined with punctuation and spacing variations, misspellings can wreak havoc on even the most diligent search.
Will Punctuation and Corporate Indicators Affect Search Results?
Punctuation matters in some, but not all, databases. And there are other critical nuances that can trip up the most diligent searcher. In the Trademark Electronic Search System (TESS), for example, a basic word mark search will yield no results when searching for “Fame Jeans, Inc”. Searching for “Fame Jeans Inc” instead – without the comma and full stop – will return approximately 31 possible results. A search for “Fame Jeans Incorporated”, with ‘Inc’ spelled out, yields no results. Going further, a search for “Fame Jeans LLC” yields three results that were included with results when a search for “Fame Jeans Inc” was completed, but no other variations with a differing corporate indicator are included. Three very similar searches produce dramatically different results.
Not all the databases are sensitive to punctuation in this way. As a searcher, you must understand how each USPTO database and its search fields operate in order to conduct a thorough search.
How Many Fields Need to Be Searched?
How many fields you search depends on what you are looking to uncover. If you are looking for a specific patent and have the issued patent number, then your search might be a single patent number search. If you are looking for any/all information associated with an entity’s intellectual property, your inquiry will require searching multiple databases and fields.
Let’s say, for example, that you are interested in uncovering trademark information. You will need to search two separate trademark databases and additional associated fields:
|Trademark Electronic Search System (TESS)
In the TESS database, you have the option of using search operators such as “and”, “or” or “the exact search phrase” when conducting a Basic Word Mark Search
|Assignments on the Web: Trademarks (AOTW)
In the Trademark AOTW and Patent Assignment database, search operators are not available in the search drop down selection.
To complete the trademark portion of your search, you would need to search approximately ten different fields, one at a time. Multiple searches for each available search field should be entered to cover differences in data entry protocols at the USPTO, regarding spelling, spacing, punctuation, name variations, corporate indicators and even errors.
Is DIY Due Diligence Worth It?
Searching the USPTO website can be a complex process, even for the most seasoned public record searcher. While specific searches can be completed without much concern, due diligence can often require searching on many name variations in different databases and culling through a myriad of results.
Even after you’ve identified which records are applicable, there is no method for assembling that data into a cohesive search result for easy review and dissemination.
Considering the substantial amount of time and knowledge that goes into this process, working with an experienced service provider for intellectual property due diligence searches may be far more cost effective than doing it yourself.
This content is provided for informational purposes only and should not be considered, or relied upon, as legal advice.