This article is written by Dhruv Shah, pursuing Diploma in Intellectual Property, Media and Entertainment Laws from LawSikho. The article has been edited by Aatima (Associate, LawSikho) and Ruchika Mohapatra (Associate, LawSikho).
Table of Contents
Introduction
A patent is a legal document that gives the right or authority over a particular field of research, invention or any other process to a person applying for it. Do you know how to do a patent search? Searching the web is not the only option when you are a legal professional and are required to do a thorough patent search. You need to use professional and government-approved resources to do a proper and detailed search. Patent searches can be done via various platforms like Google Patents, Espacenet., USPTO Web Patent Database, PQAI, Patentscope by WIPO, Lens.org. There is no cost for doing a patent search in India. A patent search can be done through the Patent database of India available at: http://ipindiaservices.gov.in/publicsearch. This article seeks to explore various methods of patent search and bring out the contrast amongst the same.
Benefits of patent search
- It shows the level of competition that one has to deal with,
- It confirms whether or not an invention’s concept has already been patented,
- It helps with determining which aspects of a particular innovation are most likely to be patentable,
- It grants you the sole right to prevent others from reproducing or importing your innovation without your permission.
Patent searching (the beginning)
While getting a patent for inventions may sound like a complicated legal process, it ensures that no other entity can claim your invention as their intellectual property. Even if they go further by trying to sell it or declare it as their own IP, they can be slammed with cease and desist letters and damages can be demanded. Patent registration ensures these legal resources are available at your disposal.
Now before you start rushing to file an application for your invention, the most important thing to note is that patent protection is granted for 20 years from the date of filing in both the US and India. This means that not every basic idea can lead to it being developed and granted protection. Inventors need to ensure that their idea is so unique that it should not have been granted patent protection already. If such an invention already exists and it’s patented, there are more chances of your application getting rejected, not to mention the money and resources wasted behind this legal process. To ensure that this does not happen, inventors can opt for contacting patent lawyers to get a thorough patent search done.
For a layman, it could be confusing because there are many different kinds of patent searches that are available. Each of these searches has its unique purpose and reasons for being conducted. Following are the types of searches using Patent documentation:
Patentability search
A patentability search is initiated before filing a patent application to guarantee whether the invention is new. This search is quite essential because nobody would like to lose all the hard-earned money spent on drafting and filing the patent application just because the examiner found a synonymous concept as your invention as the criteria for rejecting your patent application. If the search showcases that someone has already worked on a similar idea, you can save funds by not applying or by altering/improving your idea such that it fulfils the requirements of patentability.
Conducting a novelty search helps (if not ensures) to know what are the chances that your patent may get granted. If a patentability search showcases that your idea is novel and fulfils all the criteria for patentability, you can file your patent satisfied and confident that it has a high chance of getting issued. Keeping in mind the rising expenses of filing a patent and prosecuting a patent, it is always a smarter move to get a patentability search conducted before the filing of the patent application.
If the question arises on why patentability search then here are some benefits of using it:
— It will help you draft better claims,
–The effectiveness of the patent is improved,
–Helps to recognize the value of the invention.
Freedom-to-Operate Search
Freedom to operate refers to the capabilities to sell one’s product or service without infringing on the patent rights of another party. When you are granted a patent, you are granted the right to prevent people from using your patented technology. Although everyone else is restricted from infringing on your patent, you must still conduct the freedom to operate search before you bring out your product in the market. If your invention uses any other kind of invention in the form of a process, the machine, or the composition of matter, then the freedom to operate your product in the market becomes debatable. You run the danger of infringing on someone else’s IP, which comes with its repercussions.
This process is quite crucial as it gives you forewarning as to whether your product will be involved in a legal suit. Administering an FTO Search not only helps you get a crystal clear idea about the licensing needs but also facilitates you to move product development in the correct direction.
Is setting up the freedom to operate an easy or complex process?
Setting up the freedom to operate is not a simple process. There are a large number of patents already in existence and hundreds and thousands of them are granted weekly. If you are planning to launch your product in numerous jurisdictions, then you will have to access all of them to gain a perspective as to if their claims can or cannot be misinterpreted in a way that they can duplicate the features of your product. Therefore, this process requires deep focus and cannot be rushed.
Patent invalidity search
Patent validity search is a form of search that is conducted to distinguish references that are in a conundrum with the validity/enforceability of the claims of the patent that is issued by the patent office. These searches may be described differently based on the objective with which the search is being performed. Validity searches are frequently conducted by patent holders or buyers before asserting, licensing, buying, or selling a patent to confirm the enforceability of the claims. These searches can assist in understanding whether the patent in question can survive a validity assault, and thus help one take a better-informed and strengthened negotiating stance.
Reasons for conducting patent invalidity
- If allegations of patent infringement are obtained from a patent owner.
- If a cease and desist notice is obtained from the patent owner.
- Before executing your patents to regulate invalidity risks.
- Before buying a patent to examine the strength of the patent.
- Oppose a newly issued patent of a competitor.
Given that these are extremely specialized searches, it is advised to leave it to professionals like attorneys or patent search firms.
State of the Art Search
To attain an overall view of a specific patent field, a State of the Art patent search is undertaken over all the broad list of patent searches. It offers a long-standing market advantage, by aiding essential decisions at the corporate level. In a specific field, a State of the Art Patent Search is a comprehensive review of all the patent or non-patent literature.
Patent Landscape Search is also introduced which is another way of analyzing the State of the Art and attaining a more visual indication of what is going on. A State of Art Patent Search is done to illustrate all pertaining references that are related to the technology of interest. The technology of interest is a bit wide as opposed to what you would select when you are going for a patentability search. It should be comprehensive enough to capture relevant ones but at the same time should not be irrelevant documents.
Conclusion
In this article, we have analyzed four contrasting and distinctive types of patent searches that are in existence. Each of them has its relevance and its unique traits. Some of them are not even obligatory but are a sensible investment from a professional’s perspective, which produces its results in the long run.
To give an example, I would say, imagine buying an umbrella. Keeping the uncertainty due to our current climate condition insight, it may not rain often but when it does then it will save you from getting wet. If you are of the opinion that chances of rain are very minimal and do not have one and so when it rains, you are the one who ends up getting soaked. So these searches can be compared with an umbrella, as we might think that we do not need it but if it rains then possessing one would be of an advantage.
References
- https://patentlawip.com/blog/types-of-patent-searches-and-opinions/
- https://www.patentprogress.org/2018/03/06/granted-19-hours/
- https://www.wipo.int/patents/en/faq_patents.html
- https://www.oecd.org/site/stipatents/5_4_Frakes_Wasserman.pdf
- https://www.uspto.gov/sites/default/files/Examination%20Time%20and%20the%20Production%20System.pdf
- https://www.wipo.int/edocs/pubdocs/en/wipo_pub_guide_patentsearch.pdf
- https://patseer.com/
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