Types of Patent Searches
Searching and search reports are generated for different reasons. As a consequence, search reports, even those relating to identical subject matter, will look different depending on the type of search requested.
In general, there are six different types of patent searches, these being:
•Due diligence search
•Patent infringement search
•Freedom to operate search
•Document status search
•Product / process specifications search
Due diligence Search
A due diligence search is designed to capture all relevant documentation available to a diligent searcher at a defined date. The search seeks to answer the following question – faced with a problem and without hindsight what solutions were available at the priority date to help solve the problem? Or put another way: given a problem and surrounded by all relevant information what avenues would be worthwhile exploring in an attempt to solve that problem or, at the very least, be worth investigating further? A due diligence search is designed to capture all relevant documentation available to a diligent searcher at a defined date. The purpose of such a search is therefore to uncover all of the related subject matter available to a skilled addressee and will not be restricted by particular solutions. The number of documents recovered is considerable as the searcher attempts to survey the whole of a technical field. A due diligence search attempts to provide a comprehensive inventory of the state of a particular art.
Due diligence searches are often conducted in relation to patent litigation matters, although such a search can also provide an important source of a company’s market intelligence. A due diligence search will reveal data on existing competitors and any new entrants to a market. It will also find out what competitors are doing and where, and can be used as a tool for analyzing future trends and as a basis for making strategic commercial, build and buy decisions.
A patentablility search is designed to uncover any barriers that will prevent an invention being granted exclusive patent rights. The searcher will seek answers to the following questions: is the invention new and novel? Does the invention disclose an inventive step? Is the invention capable of industrial application? To be patentable an invention must be novel, it must be inventive and it must be useful.
A patentability search is often seen as a first step in obtaining a patent. A patent attorney will form an opinion of an invention based on the patentability search. A patentability search is also an extremely important early step in deciding whether to proceed with an idea. A patentability search will allow you to make considered decisions as to whether you should continue to explore your idea through the patent process. It may prevent you from spending a lot of money on further research, development, manufacture, protection, and marketing of an idea that has already been thought of and may already be being exploited by others without your knowledge and in markets that you are unaware of. As the old adage says “an ounce of prevention is worth a pound of cure”.
A patentability search is often conducted after filing a provisional patent application but before filing a complete patent application, as it can be used to identify the possible scope or limits of an invention and will assist your patent attorney to draft a robust patent application with maximum scope but within the bounds of validity.
Patent Infringement Search
To establish whether an infringement of a patent has taken place the patent owner must prove that the following has occurred: the infringer has carried out a prohibited act (i.e. made, used, sold or imported a patented product, or has used a patented process, or has made, used or sold a product made directly from a patented process); that the prohibited act has taken place in the country where the patent has been granted; that the prohibited act has occurred after publication of a granted patent; that the prohibited act falls within the scope of at least one claim of the granted patent. An infringement search is designed to ascertain all of the above and will result in a search of the patent database applicable to a particular product or process.
A patent infringement search should be conducted by any individual or company wishing to export products overseas or before entering into any agreement to supply goods overseas. Patents are restricted by territory so you may be free to export to some countries in which no patent protection is in place, but not to other countries where a granted patent is in force.
An infringement search is less involved than a due diligence or patentability search, as it is restricted only to existing patents that remain in force and which have not lapsed or expired. An infringement search will generally only involve a search of patent databases covering the last 20 years or so. Another useful and important aspect of an infringement search is that it will reveal those patents that are likely to be infringed and therefore provide an opportunity to design around them or to make subtle improvements on them. It is not uncommon for competitors of existing patent holders to avoid infringement by making similar products not covered by the patent claims.
Freedom to Operate Search
A freedom to operate search invariably involves a narrow subject area search and can be limited to perhaps three or four key words, one or two patent classes and one or two applicants or inventors. This search will ask questions about a specific, clearly defined product or process about which much is already known. Similar to a patent infringement search the main purpose of the search is to determine whether known technology is free to use. That is: is the technology covered by a patent? If so, where is it covered? and is that patent still in force?
Document Status Search
This type of search is often commissioned by companies wishing to make, use, import or sell generic goods, usually pharmaceuticals or base chemicals into a specific jurisdiction. It is similar to a freedom to operate search, although in most cases it is more specific. For example, the patent is usually known, or specific subject matter such as the compound name is known. The search is often jurisdiction (country) dependent and will invariably be run several times over a number of years often as a watching service. This type of search will look at a specific compound or patent number, equivalent patents filed around the world and their present status.
Product / Process Specifications Search
This search type is probably the narrowest of all of the searching types and may be commissioned by a company wishing to find out more about a specific technology. It is often used to answer a specific technology problem, the solution to which may be found in a single patent. Such a search can often lead to a license or cross license between like-minded companies.