When considering whether to patent your invention, it’s important to understand the various steps in the process. First and foremost, you need to understand whether you invention is capable of patent and whether it has already been patented by someone else. If it has not been patented previously and is capable of patent protection, you then need to understand what similar inventions currently exist. This will help you in categorizing and comparing your invention. Also, it will help you in drafting a patent application.
With this in mind, we want to explain to you the difference between a patent search and an analysis of whether an idea is patentable and should be patented. While related, these are totally unique concepts.
What is a “Patentability” or “Novelty” Search
A novelty search, also known as a patentability search, is used to make certain that the subject invention does not already exist. An invention must be novel, non-obvious, and useful to be capable of patent protection. Novelty generally means that the invention has not been previously disclosed to the public. Disclosure could include prior sale of the invention or it could have been the subject of a prior disclosure through patent filing or publication of design documents.
If someone has previously disclosed the idea to the public, it does not automatically destroy the ability to patent your invention. Though, it may be necessary to alter the invention in such a way (such as by making improvements) to allow it to be considered novel. This can be a very tricky process, so it is advisable to work with an experienced patent attorney in undertaking this action.
In any event, determining whether the invention is novel will be extremely valuable to you. You will be able to determine what exactly exists. In addition to potentially saving you money on a patent application, it can also provide you examples of insight into how to file your patent application. For example, a previously filed application for patent will include detailed specifications and claims. These will serve as a model for you when drafting your specification and claims. Notably, it will help you determine whether to address aspects of the patent as independent claims or as dependent claims. Remember, a better-filed application can mean a higher degree of protection for the filed invention.
What is a “Freedom to Operate” or “Clearance” Search or Analysis
The Freedom to Operate (FTO) search helps you understand how you can manufacture and sell your invention in a manner that does not infringe upon existing patents held by others. So many patented inventions build upon the prior inventions of others. This is particularly true for inventions that are part of another machine or invention. If your invention employs other inventions as part of the function or builds upon an existing invention, you will need to secure the rights and permission of the original patent holder before you can manufacture and sell your invention. Otherwise, you run the risk of infringing upon another person’s patent and running into legal troubles.
The FTO search is a form of due diligence. It is a focus on identifying any existing patents that are or could be considered incorporated into your invention. As discussed above, this arises when an invention incorporates aspects of other inventions.
Basically, this type of search is a risk assessment. There will always be the possibility that your invention will be similar to a tangentially-related patent. As such, identifying these items can allow you to assess the risk of infringement. Then, if the risk is high, you can make the decision of whether you wish to attempt to license rights to produce your invention. Remember, all of this needs to be done strategically.
Approaching a patent holder for permission to license their invention rights will tip your hand regarding your intent to incorporate their invention into your invention. As such, if the negotiations for licensing fail, you could find yourself in a legal action to stop you from manufacturing your inventions. The moral of this story is that you need to seek the assistance and guidance of a trained legal professional when undertaking these types of decisions and negotiations.
If you do under take this process on your own, here are some practices to consider:
Approach the related patent holder and seek to purchase or license their rights.
Seek to cross-license the invention. This allows more than one party the rights to employ or manufacture the invention. Of course, this type of licensing comes with numerous restrictions.
Seek to challenge the validity of the other party’s invention. While this can be expensive, threatening this process can give you leverage in the licensing negotiation.
If all of these options fail, you are left with the option of redesigning your invention so that it will not conflict with the related patent holder’s rights. Designing around an existing patent requires a great deal of research and development. Also, it requires the expertise of a skilled patent attorney or agent. These individuals have the experience necessary to successfully patent the invention claims in the face of opposition or challenge. Everything depends upon the precise language you use.
What is a “Validity Search”?
As the name implies, a validity search seeks to determine the validity of an existing patent. This can be particularly useful when there is an existing patent that seems to conflict with your invention. Another name for this is a “strength search” or an “opposition search”.
The objective of this search is ultimately to determine whether there is an opportunity to challenge the validity of someone else’s patent. Let’s assume that you created an invention that incorporates some aspect of another person’s patented invention. This can be as little as incorporating one independent claim in another’s invention. You do not believe that you should or would be able to secure the rights from that patent holder. You may seek to challenge the validity of that person’s patent. You can do this preemptively before you begin producing your invention. If you are able to challenge the patent-holder’s rights, you will be free to incorporate the existing invention into your invention without fear of violating her rights.
If a person has a validly issued patent, how is it possible to challenge those rights. Basically, you will be claiming that the patent examiner messed up in doing his or her job. Patent examiners are human beings who can make errors. They have a limited amount of time when conducting searching for prior art. They may fail to uncover prior existing art that invalidates a patent application. You can spend the time and potentially find prior patents that do just this. At that point, you can bring an action to challenge the validity of the patent by demonstrating that the patent should never have been issued.
Some other reasons to conduct a patent validity search include:
You are the subject of a patent infringement allegation (such as receiving a cease and desist letter).
When you are seeking to enforce your own patent rights against a third party infringer. You want to know how secure you are against challenges to your patent validity.
When seeking to purchase another party’s patent rights.
If you need to oppose the patent held by a competitor.
What is a “State of the Art Patent Search”?
This is a general search of inventions in a particular field or function. It is generally used for strategic functions. It helps the searcher understand the state of the art in the field. It can apprise her of novel technologies to consider when making business decisions affecting her own invention.
Generally, conducting this type of searching means reviewing all patent and non-patent information and material available to the public. It is common that an invention may not be the subject of a patent application. Remember, the ultimately goal is to understand the state of the technology in the field.
It is best to carry on this type of search when:
You need to determine the direction for future research and development;
To stay apprised of competitor actions; or
To help you understand where your company falls with regard to product offerings.
LawTrades Understands the Patent Search Process
The patent search and analysis processes are, in a word, “difficult”. Doing a thorough search requires searching not only existing patents, but also patent applications and other public disclosures. If employing the various resources for searching prior patent filings were not difficult enough, add onto the process of visiting company websites, monitoring retail channels, and reading articles on new inventions. All of this is necessary to carry out the various types of patent search and analysis necessary to feel secure when making a decision or undertaking the patent filing process.
Luckily, LawTrades’ intellectual property attorneys are here to assist you with all of your patent search and filing needs.