Understanding the different kinds of patent searches

In selecting the right type of patent search to meet your needs, you need to determine what information you are seeking to learn, and what countries you want the search to cover. The depth and cost of your search will depend on what information is collected and analyzed. The strategy for creating search strings differs greatly with a different focus of the desired results.

What countries do you want to cover in your search?

Patent rights are country-specific. A technology that is protected by patent in one country may not have a counterpart patent in other countries. The key is to determine what countries are commercially desirable for your technology. For example, a technology may be protected in the US, but not in other robust markets like Canada, Europe, China or India. This is especially the case with software and business method patents. Similarly, issued patents in different countries may have broader or narrower claims. Design-arounds may be possible in some countries.

As a rule of thumb, you can start with a US search unless your business plans depend upon patent protection in other foreign markets (for example, you will manufacture overseas or your major competitor is located there). The US has such a strong market and patent system, most technologies are likely to be protected in the US. You can broaden your search later if necessary, or depending on the results you receive from your US search.

Is my idea patentable? A patentability search

Potential patentability of your idea depends upon whether or not your idea is novel and non-obvious. A patentability search can be conducted to identify prior ideas that may be relevant to determining novelty and non-obviousness of your potentially patentable idea. Both patent and non-patent literature should be searched, and materials related to your idea and how it was developed should be evaluated.

This is not an exhaustive search, but is a cost-effective, low-level search to uncover potential barriers early on in the process. It is important to keep in mind that this will not give any guaranty that there is no prior art because there is always “secret art” that cannot be uncovered in any patent search (new patent applications are not publically available for at least 18 months, may be subject to a secrecy order, or may have a non-publication request by the inventor). A patentability search is also commonly referred to as a prior art search or a novelty search, and its goal is to understand if and how the potentially patentable idea differs from prior ideas. This information will help you decide whether to pursue patent protection, to determine the potential scope of your patent, and to help establish the business value of your idea.

Does anyone else have a patent covering my idea? A state-of-the-art or landscape search

A good development strategy for a new product or process includes a state-of-the-art search (also known as a landscape search) to identify recent patents and patent applications published within a specific technology area. The best time to pursue a state-of-the-art search is at the front-end of a development project, when adjustments to the design plan are most feasible. A state-of-the-art search can identify potential patent barriers to the commercialization of products, processes or technologies early in the development, which can bring about significant cost savings over the product life cycle. There are several other benefits to a state-of-the-art search, including: (i) gaining knowledge of the patent owners and potential competitors that exist in the same arena, (ii) reducing the risk of infringing a competitor’s patented intellectual property, (iii) improving intelligence of the competitive landscape, and (iv) uncovering patents to potentially purchase or license. This is a mid-level search. It is generally a small investment in competitive intelligence in your business market/industry. Information is power when it comes to making prudent business decisions and investments.

Can I get around my competitor’s patent? Freedom-to-operate search or clearance search

A freedom-to-operate search, also known as a clearance search, gathers the information needed to obtain a legal opinion assessing the risk of infringement of existing patents and pending patent applications. A freedom-to-operate search involves a full in-depth review of potentially blocking patents in all countries in which the manufacture, use, or sale of the proposed product or process is expected to occur. This is a fairly exhaustive search, and its cost is in the thousands, sometimes tens of thousands, of dollars. It is generally a small investment when compared to the cost of litigation or the loss of the substantial upfront investment in a new product launch.

A freedom-to-operate search identifies specific rights, jurisdictions, expiry dates and other pertinent information. This data can be analyzed to determine how the potentially blocking patents are to be construed and how broad or narrow the issued claims may be. Patent claims may be construed to cover some products or processes and not others because of definitions in the patent specification or admissions made by the patentee during patent prosecution. A freedom-to-operate search can identify patents that may have expired or may not still be in force if the assignee has not paid required maintenance fees.

Can I challenge this patent? Can my competitor challenge my patent? An invalidity search

An invalidity search, also commonly called a validity search, is a search of prior art to assess one or more claims of a target patent to determine if the claims were properly allowed or whether there potentially exists a basis for a patent challenge. An invalidity search may include a review of the file history (the correspondence between the patent owner and the Patent Office during prosecution) of the target patent and other closely related patents. An invalidity search considers granted patents, published patent applications, and non-patent literature such as technical publications, product catalogs and tradeshow materials, and other public documents that can be used as prior art against a potentially blocking patent. Claims in a patent could be invalid if there is prior art that the patent examination process didn’t consider. Prior art generally must have been made public before the date of the invention or its priority date. This is a fairly exhaustive search, and its cost is in the thousands of dollars. It is generally a small investment when compared to the cost of a patent license or loss of a potentially profitable business opportunity.