You are an inventor and want to make sure that you can freely develop and sell your products in the market? Before applying for a patent application you want to make sure that your invention is novel by doing a patent search. But do you know how many types of patent searches are there? How these particular patent search affects your business? If yes, then well and fine. If no, then this article will help you gain insight on the different type of patent searches and how they affect your business.
A patent is an exclusive set of rights granted to the inventor or applicant by the sovereign state or intergovernmental organization. The business owner can stop others or competitors who illegally make, use and sell the patented products. However, a patent ownership doesn’t guarantee an inventor of the fact that his invention or product will not infringe previous patent rights of other assignees.
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A patentability search also known as a Novelty search is done prior to filing of a patent application. This is done to find out if the invention is completely new and original with no similarity as when compared to the prior-art. According to the Patent Law, an invention will only be granted patent when it is completely new, useful and non-obvious. If a standard patent application is filed, then the patent examiner will conduct the search during examination to determine the novelty of the patent. The search will also check whether the invention complies with the inventive-steps and other requirements a stated in the Patent Act.
Learn: Prior Art and Prior Art Searches in detail.
A preliminary patentability search or an official patentability search does not include a Freedom to Operate or FTO search.
The term ‘Freedom to Operate’ essentially means the freedom that the inventor or patentee would enjoy while manufacturing and selling the product in a particular country or jurisdiction. It also entails that you don’t infringe other intellectual property rights.
What is a Patentability Search?
The first and foremost step of a patentability search is to find out what needs to be searched. In brief, what is to be searched should be identified specifically. A patent specification is required along with a properly furnished Claims section.
During a patentability search for a particular invention, documents from all previous patents and applications are taken into consideration along with documents published in journals, magazines, websites, brochures, books and research papers. A single similarity if found will prohibit the invention from obtaining a patent.
The search is generally initiated by a list of keywords that closely matches to the features of the invention besides considering the claims. The keyword should belong to the same technological domain as that of the invention. Since an inventor is the best person to know about his product or invention, he can also build a set of prospective keywords. Internet searches too yield result. An invention if is not new then will be easily detected in this step and any further searching will not be required.
A patent office allocates a specific subject matter classification code to a patent application. The search strategy is constructed upon this classification. A classification searching is also a much opted search method besides keyword search.
After finalization of the search strategy, it is applied to patent databases to obtain the results. Apart from patent databases; research journals, any academic documents or trade collections should also be included in the search. A searcher can broaden his search by extensively searching patent databases in any part of the world he wishes to in his desired language.
Thus what do we get at the end of a patentability search? We come to know whether an invention or product or process is patentable or not.
Do You Know: Why Patent Information is so important?
Freedom to Operate Search
This is also known as Clearance Search. A Freedom to Operate or FTO search is conducted to determine whether manufacturing or selling of a product can be done without infringement of intellectual property rights of others. Thus the main motto of a clearance search is to establish that sufficient pain has been taken to provide evidences that a finalized product or invention would not infringe any other existing intellectual property rights.
How to overcome an adverse patent clearance search?
Sometimes exploiting a product can lead to infringing other existing intellectual property rights. However it may be possible to negotiate a license, or obtain an assignment of the patent. If a business owner doesn’t have a patent of his own, then it will prove to be difficult to negotiate in situations of a patent infringement.
Differences between Patentability and Patent Clearance Search
It will thus be easier to make out why not to depend only on a particular type of search (say patentability) while any business owner is thinking of exploiting his product commercially.
Points of Differences
Patent Clearance Search
|What is the search done for?||To find out the novelty, non-obviousness of an invention or product||Whether a product while exploiting can infringe any existing IP rights|
|What kinds of documents are favorable?||Documents available publicly-existing patent, patent applications, research paper, journals||Only patents that are non-lapsed and patent applications|
|Which countries are covered?||Documents from any countries will be considered||This is for those particular jurisdictions where the product will be commercially exploited|
|What to do to overcome negative search results?||Practically nothing can be done||It may be possible to negotiate licenses to use patents located in the search|
For any business planning to develop its own product must consider both the patentability search and patent clearance search in its first developmental stages. It is wise enough to categorize the IP fundamentals in its initial stages rather than being forced to abandon a project in its terminal juncture.