Categories of Patent Search and Their Importance

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Date: 16 May 2023

Categories of Patent Search and Their Importance

Intellectual Property (IP) is an essential intangible asset for companies, and devising strategies for IP assets plays a vital role in businesses. The development of IP, particularly patents, demands a significant investment of time, effort, and money. The time required for obtaining a patent alone is indicative of this effort. Once a patent is granted, it secures the invention from being claimed by anyone else as their property. Legal action can be taken against those who infringe on the patent by selling copies or manufacturing products that overlap with it. This legal recourse can help prevent others from violating the patent.

Obtaining a patent is a complex process that involves several assessments of novelty, non- obviousness, and industrial applicability. This is why taking assistance from a patent search company is crucial. Conducting a thorough check of prior art is crucial in determining the patentability of an invention. Inventors are required to perform various types of patent searches before and after proceeding with the patent application drafting and filing. This is necessary to ensure that the invention meets the necessary criteria, to increase the likelihood of a successful grant of the patent and to stop others from misusing the invention.

Novelty or Patentability Search

The most frequently requested type of patent searches are novelty searches, which are conducted by patent search companies to assess the likelihood of obtaining a patent. The primary goal of these searches is to determine if the invention is patentable, although they do not account for potential infringement on existing patents. Novelty searches are typically requested by individuals or entities with new inventions to assess whether their invention is novel and non-obvious, and if it is worth investing time and money to pursue a patent.

Importance of Novelty Search

Conducting a novelty search can aid in improving the drafting of patent claims by providing valuable knowledge and expanding the scope of the draft. This search can also help inventors determine the strength of their patent, which can increase its overall value. It is important to note that a novelty search is more complex than a simple Google keyword search and requires the expertise of a patent search company in the relevant subject matter.

Choice to Operate Search

Conducting a Freedom to Operate (FTO) search is crucial to assess the viability of commercializing a product in the presence of existing, in-force patents. An FTO search by patent information services evaluates whether the product owner can safely operate and sell the product without the risk of infringement lawsuits. This search is essential to minimize potential losses resulting from infringement and should be conducted prior to commercializing any product.

FTO searches are primarily focused on the claimed subject matter of existing, in-force patents, rather than the disclosure or specification portion of prior art. As a result, FTO searches are considerably more complex, time-consuming, and expensive compared to other types of patent searches.

The objective of an FTO search is to identify any potential infringement of existing patents by a product. FTO searches are conducted on a country-by-country basis since the patent rights are territorial rights. If infringement is found, the product owner can consider various options such as redesigning the product, abandoning commercialization, designing around the patent, or negotiating a licensing agreement with the patent holder.

Importance of Conducting FTO Search

This refers to the due diligence process of determining whether there are any pending patent applications or granted patents similar to a product in question. This process helps in assessing the potential risks and analyzing the future of the patents and corresponding products. If there is an existing patent in the market, the applicant can consider options such as licensing or cross- licensing. Additionally, knowledge of registered patents can help the applicant design around them and introduce new features.

Infringement Search

Conducting a patent infringement search is essential to prevent unauthorized use, sale or manufacture of a patented invention. Infringement analysis helps determine if a product or process violates an existing patent claim. Patents grant monopolistic rights to inventors, and third parties require explicit permission through a license to use the invention wholly or partially. Any use of a patented invention without consent, including making or selling, constitutes patent infringement and can be legally challenged. Evidence of Use (EoU) incorporates the results of the Patent Infringement Search, which includes a mapping of claim elements of the subject patent to potential or existing product infringement.

There are different categories of patent infringement, including direct, indirect, wilful, literal, induced, and contributory. Exceptions to patent infringement include experimental use and prior use. Patent infringement is a criminal offense, and both product and process patent owners can request an infringement analysis search.

To conduct an infringement analysis, it is necessary to determine the claim's scope and verify if all elements of the claim are present in the product or process. To establish if a patent covers a particular product, the patent's numbered claims must be reviewed. If the product includes every element outlined in at least one independent claim, it is considered to literally infringe the patent. However, if the product omits even one element included in the claim, it does not infringe from a literal standpoint. In such cases, the evaluation is made based on the Doctrine of Equivalence (DOE).

Validity Search

Validity searches are not as commonly requested as novelty and FTO searches and are typically conducted in specific scenarios. The main purpose of a validity search is to determine whether a specific patent is valid and enforceable. This type of search is typically requested by potential defendants or defendants in patent infringement lawsuits who want to challenge the validity of the patentee's patent. Alternatively, a validity search and opinion may be requested before purchasing or licensing certain patents to assess the strength of those patents. Additionally, a validity opinion plays a vital role in conducting due diligence before a merger or acquisition to assess the IP portfolio of the target company.

Why Is Validity Search Essential?

The outcome of a patent invalidity search by a patent search company can be used by the defendant in a legal dispute to challenge the validity of the patent, either by filing a petition or presenting the findings in court. This type of search can be particularly useful in situations where the defendant has received a notice or complaint from the patent holder. However, given the specialized nature of these searches, it is recommended that they be conducted by experts such as patent search firms or attorneys, as they are time-consuming and require a high level of expertise.