Types And Importance Of Patent Search
Intellectual Property is undoubtedly an important intangible asset to the company. IP asset strategies hold a prominent place in the business. The development of IP and especially patents requires a lot of time, effort, and money. This can be well apprehended by the time that is required for a patent to be granted. If a patent is granted for the invention, it ensures that no other person claims your invention as their property. Even if someone ends up doing so – by selling a copy of the patented invention or manufacturing a product that overlaps on the patent, they could be stopped from resuming these activities with the help of legal recourse which can help to prevent others from infringing the patent.
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A grant of the patent is a long process that entails in itself multiple checks on novelty, non-obviousness and industrial applicability. For this, it is very important to have a solid check on prior art to understand the patentability of the invention. There are multiple types of patent searches that the inventor is expected to do before getting ahead with the patent application.
Novelty or Patentability Search
Novelty searches are the most commonly requested searches. They are usually conducted to determine the likelihood of getting a patent. The main objective of carrying out such searches is to find whether the invention is patentable, but it does not account if the invention infringes any other patent in real life. Typically, these searches are requested by entities and individuals with new inventions to determine if their invention is patentable (novel and inventive/non-obvious), and worth the time and money to pursue.
Why Novelty search is important?
This search helps to better draft the claims. Searching helps to broaden the scope of the draft with having more effective knowledge. This search also helps the inventor to identify the strength of the patent, thereby, adding to the value of the patent. The conduct of the novelty search is more than a Google keyword search and it must be done by having a requisite experience in the subject matter.
Freedom to Operate Search
A Freedom to Operate (FTO) search helps determine whether it would be wise to commercialize a product given existing in-force patents. An FTO search helps evaluate whether the product owner is free to operate and commercialize a product without fear of getting sued for infringement. One can say it is a must to follow the process before the commercialization of a product to mitigate huge losses due to infringement.
FTO searches are mainly focused on the claimed subject matter of the relevant in-force patents, rather than the disclosure/specification portion of the prior art. Due to this, FTO searches seem to be much more complicated, time-intensive, and significantly more expensive.
The goal of an FTO search is to determine whether a product infringes upon any of the patents found as part of the FTO search, wherein as Patents are territorial, FTO searches are also carried out on a country-by-country basis. In case the product is found to be infringing, the product owner can redesign the product, abandon the commercialization of the proposed product, design around the patent, or approach the patent holder for possible licensing negotiations.
Why it’s important to conduct FTO search?
This is more of the due diligence part of finding if there is any pending patent application or a granted patent. This helps in providing the risk assessment for analyzing the future of the patents. If there is any patent already in the market the applicant can also take the option of licensing/cross-licensing. Also knowing the registered patent can help the applicant to design around the patent and introduce new features.
Non-infringement opinion is directed to a specific patent or a set of patents that have been previously identified. When a new product, process, or technology is created but is known to be similar to an existing patented product/process/technology, a non-infringement opinion should be obtained. A non-infringement opinion has similar steps involved in the FTO search except that no search is conducted because the patent at issue has already been identified. Also, just as with FTO opinion, deconstruction of independent claims of the relevant patents is done along with the analysis and comparison of the element by element to the proposed invention.
A significant advantage of conducting FTO and non-infringement opinions in advance of any allegation of infringement or commencement of a lawsuit is that if the search and opinion are performed by a reputable licensed patent attorney, it can serve an exculpatory purpose if the inventor is sued for patent infringement. For instance, if a non-infringement opinion is obtained by an inventor and later the inventor is sued for patent infringement based on the same patent that was analyzed in the non-infringement opinion, the court will consider the opinion and may negate a finding of enhanced damages for willful infringement which can often be “treble damages” – tripling the amount of the actual damage.
Validity searches are relatively lesser frequently used and are carried out in specific scenarios. The goal of a validity search is to determine whether an identified/target patent is valid and enforceable. It is primarily requested by a potential defendant or a defendant in an actual patent infringement lawsuit that wishes to invalidate the patentee’s patent as a defense to patent infringement. In other cases, a validity search and opinion may be used before buying or licensing certain patents to determine the strength of those patents. A valid opinion also serves an important role in performing the due diligence before a merger or acquisition for purposes of evaluating an IP portfolio of a target company.
Why validity search is important?
In litigation, the defendant can use the result of a patent invalidity search to try and overthrow the patent in court or by filing a petition for IPR. The invalidity search can be beneficial when a notice or a complaint has been received from the patent owner.
Given that these are highly specialized searches, they are best left to experts like attorneys or patent search firms to be done with since these searches are time-consuming and require expertise.
Author: Saransh Chaturvedi (an advocate) currently pursuing LLM from Rajiv Gandhi School of Intellectual Property Law (IIT Kharagpur). In case of any queries please contact/write back to us at firstname.lastname@example.org.