Intellectual property, particularly patents, is one of the most valuable intellectual assets of a business, particularly one that relies heavily on invention and innovation. Developing any type of invention takes a significant amount of effort and money. It only makes total sense to safeguard the inventions by protecting or patenting them. In this article, we will look at four types of patent searches that can be valuable in the long run.
It is not easy to turn an idea into a patent. A patent is evaluated on a variety of criteria to ensure that it is novel, obvious, and useful. It is ensured that it is not similar to another person’s invention or concept prior to the date of filing. A patent is granted by the patent office of a particular nation only after all of the required criteria have been met.
In some cases, if a patent is granted and reexamined, the rights of the inventor or assignee may be revoked. We will go over this further later. But it is important to note that this is among the most important strategies used by organizations to weaken their competitors’ patent portfolio.
But that is advanced material. Taking a step back: There are various types of patent searches. While some are carried out prior to the filing of a patent, others are most effective after the patent has been granted. Each of these searches has a distinct purpose and reason for being carried out.
Let’s look at the four types of patent searches:
1. Patentability Search
A patentability search, also known as a novelty search, is performed prior to filing a patent application to ensure that the invention is novel. This search is critical because no one wants to lose all of their hard-earned funds spent on drafting and filing the patent application because the examiner used a similar idea to your invention as the criteria for rejecting your patent application.
The inventor, patent examiner, patent lawyer, or a patent search firm can determine whether or not anyone else has had the same idea by conducting a patentability search for prior art. If the search results show that someone else has already worked on a similar concept, you can save resources by not filing the application OR you can change or improve your idea so that it fulfills the patentability criteria.
Conducting a novelty search can help (but does not guarantee) that your patent will be granted. If a patentability search reveals that your concept is novel and meets all of the criteria for patentability, you can file your patent with confidence that it will be issued.
Given the high cost of filing and prosecuting a patent, it is always a better decision to conduct a patentability search before filing the patent application.
The Advantages of a Patentability Search
Now that we know what a novelty or patentability search is, let’s look at the advantages and significance of conducting one.
1. It will assist you in creating stronger claims
There is always the possibility that you overlooked information about the technology that could have expanded the scope of your patent. A patentability search broadens your information horizons, allowing you to draft broader claims with greater scope.
2. Increasing the strength of patents
Novelty search aids in identifying additional cases that the inventor may not have covered. If these uncovered cases are incorporated into the application, your competitor may be less likely to use these uncovered references against you when challenging the validity of your patent.
3. Aids in comprehending the worth of the invention
A novelty search can help businesses and large corporations determine the uniqueness and value of a patent while also understanding the potential for competitiveness that the patent offers.
If the invention or patent is similar to a competitor’s invention, the patent can be tailored to maximize its monetization potential while still allowing the patent holder to operate freely.
Now that we’ve established the advantages of patentability searches, let’s look at why you should hire a professional to conduct one.
The Most Common Mistakes in Patentability Searches
Conducting a novelty search prior to filing an application is never a mistake. The error occurs when you carry out the move, i.e., the search, incorrectly.
While you can conduct your own patent search, you may not get the same results as a professional patent searcher. An efficient search necessitates extensive research on the subject and is more than a simple Google keyword search. It goes without saying that the process takes time. You can conduct the search on your own if you have a lot of time and a good understanding of the subject.
However, there is always the possibility that prior art for the invention exists, which would go unnoticed during your search but could be discovered by the examiner who would reject the grant of your patent. Thus, consulting professionals is a great option because the extra cost is well worth the outcome.
Given the additional costs, some people may believe that a novelty search is unnecessary. By not conducting this search, they may be making a costly mistake for which they will have to pay later. When a patent is involved in a lawsuit, opponents frequently challenge the patent’s validity in order to avoid paying royalties. If prior art is discovered for the patent in question as a result of a lack of novelty search, the patent holder will lose not only potential income but also his patent rights.
While there is technically no need to conduct a novelty search, it is often preferable to do so because preparing a provisional patent application or a non-provisional patent application takes a significant amount of time, effort, and money. Not safeguarding your bases ahead of time could cost you thousands of dollars.
2. Freedom-to-Operate Search
When someone comes up with a patentable invention, they frequently overlook patents held by others. Obtaining a patent for your invention does not grant you the right to operate.
How do you sell or manufacture your product/invention without violating the patents of others? This is where search freedom comes in handy.
The ability to sell one’s service or product without infringing on the patent rights of another party is referred to as freedom to operate. When you receive a patent, you gain the right to prevent others from using your patented technology. Even if everyone else is barred from infringing on your patent, you must still conduct a freedom to operate search before releasing your product to the public. If your invention employs any other type of invention, such as a process, machine, or matter composition, your product’s freedom to operate in the market is called into question. You run the risk of infringing on someone else’s intellectual property, which has its own set of consequences.
A person who invented the idea of attaching an eraser tip to the end of a pencil, for example, could patent the invention. However, there may be numerous patents on erasers, glue, or the process of attaching them that prevent your product from freely operating in the market. Your own patent does not protect you.
What is Freedom to Operate Search?
A Freedom to Operate search is a proper research process that focuses on identifying any pending patent applications or active patents that may restrict your ability to operate.
A specialized search, known as a freedom-to-operate search or FTO Analysis, is required to determine market freedom to operate.
Why is it important to conduct an FTO search?
This procedure is critical because it provides you with an assessment of the likelihood of your product being involved in a legal suit in the near future. It also allows you to assess the risk of patent infringement. Not only that but conducting an FTO Search provides you with a clear picture of your licensing requirements and even assists you in moving product development forward.
What should you do if patents restrict your ability to operate?
If a patent restricts your freedom to operate, you can choose from the following options:
Contact the patent holder about the sale or licensing of the patent
Contact the patent holder and ask if the patent can be sold to you. If the patent holder refuses to sell, you can obtain a license for that patent.
Cross-licensing is an option if your product is valuable to the other patent holder. In this case, both parties can grant each other the right to use their invention.
Design the product around its features
Because you know the risk associated with a specific feature in your product after conducting a freedom to operate search, you can design around existing patents and add a new feature in the product that does not overlap with any existing patent. Many large corporations use this strategy to reduce risk.
Why is Freedom to Operate Challenging?
Establishing Freedom to Operate is not an easy process. There are already a large number of patents in existence, and thousands more are granted each week. If you plan to launch your product in multiple countries, you must assess your risk in all of those countries to obtain the freedom to operate opinion. You must examine the claims of the pertinent patents granted in these countries to determine whether their claims can be interpreted in such a way that they overlap with the features of your product. This process necessitates concentration and time.
3. Patent Invalidity Search
Patent validity search is also known as invalidity search. This is a type of search used to identify references that call into question the validity of patent claims issued by the patent office.
These searches may be referred to differently depending on the objective of the search. Before licensing, asserting, buying, or selling a patent, patent holders or buyers frequently conduct validity searches to confirm the enforceability of the claims. These searches can help determine whether the patent in question can withstand a validity challenge, allowing you to negotiate more effectively.
What is the purpose of a Patent Validity or Invalidity Search?
Prior art searches are typically conducted by patent examiners with limited time and resources. According to some sources, the patent examiner spends about 12 hours per case conducting prior art searches. With such limited resources, it is difficult for the examiner to investigate everything that is available. Therefore, if the patent is challenged, the validity of the patent may be at risk. In litigation, the defendant can use the results of a patent invalidity search to attempt to invalidate the patent in court or by filing an IPR petition.
Scope of a Patent Invalidity Search
Because the entire patent infringement lawsuit is based on proving either the patent’s validity or the product’s non-infringement. When it comes to invalidity, the new documents discovered through the search must be superior to the prior art revealed earlier by the patent examiner. As a result, a patent invalidity search is a complete curse on the patent.
What are the reasons to conduct a Patent Invalidity Search?
The following are the reasons for conducting a patent invalidity search:
- When a patent owner files a patent infringement complaint
- When the patent owner issues a cease-and-desist letter
- Prior to enforcing your own patents to reduce the risk of invalidity
- Before purchasing a patent, to investigate its strength
- To oppose a competitor’s recently issued patent
Because these are highly specialized searches, they are best left to professionals such as attorneys or patent search firms. When these searches are ordered, the following information must be provided to the party conducting the search.
What are the requirements for a Patent Invalidity Search?
The following documents must be provided for a patent invalidity search:
- The patent number and the specific claims that must be overturned
- The priority deadline
- The priority art you are already aware of
- The goal of conducting a validity search
4. State-of-the-Art Search
A state-of-the-art patent search is performed across all patent searches to gain an overall perspective of a specific patent field. It provides a long-term competitive advantage by assisting with corporate strategic decisions.
How does it accomplish this?
When we talk about patent search, we usually have a very short-term, narrow focus. The main concern is usually the novelty of a specific invention or the invalidity of a single patent. A state-of-the-art search, on the other hand, digs deep for a broader perspective.
What exactly is State-of-the-Art Search?
A State-of-the-Art Search is a thorough review of all patent or non-patent literature in a specific field. The primary goal is to create a comprehensive picture of the state of play in a specific technological field. It can also include all non-patent literature in a specific field. A Patent Landscape Search is also available, which is another method for evaluating the state-of-the-art and obtaining a more visual representation of what is going on.
When is it necessary to conduct a state-of-the-art patent search?
The state-of-the-art patent search is beneficial in two ways:
- when you want to determine the direction of your research
- when entering a new field through investment or acquisition
Let’s look more closely at both of these scenarios.
Choosing a Research Direction
A state-of-the-art search can help organizations that are active in a domain determine the best future direction of their research. It can assist them in understanding the most recent advances in the field/ in reconsidering what has been done previously.
Entering a New Field
Before entering a new field, conduct a state-of-the-art search to get a clear picture of the most recent developments and the domains that have previously been pursued. It can be very useful in determining a field’s competitiveness as well as the likelihood of long-term profitability.
What should a state-of-the-art search look for?
A state-of-the-art patent search is performed to collect all relevant references relating to the technology of interest. In general, the technology of interest is broader when conducting this type of search than when conducting a patentability search. It should be broad enough to capture relevant documents while excluding unrelated ones.
Why are state-of-the-art patent searches regarded as a wise investment?
Corporate strategy is frequently in sync with IP strategy for the majority of organizations. Moreover, it is difficult to devise an IP strategy without an understanding of the existing state-of-the-art, i.e., what other businesses in the domain are doing. This is where the search can help organizations ensure that their present course is still the most likely to produce the best results for shareholders and investors. In today’s world, data has more weightage over opinions and state-of-the-art provides just the right data to help C-suites make much better decisions. In other words, it is only the wisest investment that assists in the making of other investments.
We looked at four different types of patent searches, all of which are important. Each has its own significance and set of applications. Some are not even required but are a wise investment that pays off in the long run.
Consider them similar to purchasing an umbrella. It doesn’t rain often, but when it does, the umbrella keeps you from getting wet. When the chances of rain are low and you don’t have one, you’re the one who gets wet. These searches are similar to umbrellas. You may not always need them, but when it rains, you’ll be glad you have one.