Searching patent literature early can help you determine whether your invention or development is already known.
A patentability search reviews patent and other literature to assess whether your invention meets the requirements for a patent, specifically whether it is new and inventive. This search is usually carried out before you apply for a patent. It helps you decide whether to file an application. A preliminary search is optional and is not a mandatory step in obtaining patent protection. You can therefore draft and file a patent application without conducting a preliminary search. A preliminary search also does not replace the search carried out by the patent office on your application.
A search strategy is developed following a discussion with a patent attorney and, if needed, a patent information specialist.
Applying the search strategy to literature databases, particularly patent databases, typically produces documents that can be used to refine the strategy further. This helps identify the literature most relevant to your invention.
The main findings are discussed in a report. The documents identified are summarized, and their relevance to your invention is explained. The report concludes with advice on the prospects for patent protection based on the literature found.
A freedom-to-operate (FTO) search can be carried out at various stages during the development of a new product or process. Ideally, it should take place before you make an important or costly decision, and preferably no later than before you enter the market.
An FTO search differs from a patentability search. Its purpose is to investigate whether you might infringe someone else’s patent rights. A patentability search assesses whether you can patent a product or process.
Only patent rights that are still in force in the territory where you market or manufacture a product, or carry out a process, can be infringed. In addition to identifying potentially relevant patent rights, it is important to analyze the claims of the patents found. These define the scope of protection.
The patent rights identified are discussed in a report. A patent attorney also provides an assessment of the risk that you might infringe these rights.
An invalidity search helps you assess the strength of someone else’s patent. It is often carried out when you are accused of patent infringement, to investigate the patent’s validity and potentially initiate revocation proceedings. An invalidity search may also be useful if a competitor’s patent has recently been granted and you want to challenge it through opposition proceedings. The search may identify literature that can serve as a basis for those proceedings.
The purpose of an invalidity search is to find new literature that undermines the novelty and/or inventive step of the invention claimed in the patent. The documents identified can support arguments that may lead to the patent being revoked or its scope of protection being narrowed. You can also use these documents in negotiations with the patent holder, for example to obtain a license on favorable terms.
The literature identified is discussed in a report. The report also explains whether and how you can use this literature to challenge the validity of the patent concerned.
