Patent Search
Prior Art Searches
Prior art is any evidence that an invention is already known. In other words, a prior art search is conducted to assess whether the same or similar invention already exists. Prior art does not need to exist physically or be commercially available. It is enough that someone, somewhere, sometime previously has either described or shown or made something that contains a use of technology that is very similar to an invention in question.
There are no accurate statistics, but some experts estimate that for every recorded invention that eventually reaches the market, ten never will. This means that if you want to find out if your invention is novel, you should indeed search products past and present – but you should also search much further.
Patentability Searches
A patentability search is conducted to ascertain whether the invention in question is patentable or not. Patentability searches keep ‘novelty’ of the invention in focus. Apart from determining whether the invention is novel and potentially inventive in view of the prior art, a patentability search can assist in determining how broadly one can claim that new invention, which can give some insights into the commercial value of the patent.
But even if an idea is novel, novelty on its own may not mean much. For an invention to have good commercial potential, it needs to be a significant improvement on prior art. For example, electric toothbrushes used to be too expensive to sell well. Then someone discovered that it was possible to use a much cheaper motor. Prices fell and sales soared. This new type of electric toothbrush simply included a well known motor, and functioned in a well known way, so there was no invention – but the novelty of combining motor and toothbrush gave it a large commercial advantage.
Freedom-to-Operate (FTO) Searches
A Freedom-to-Operate (FTO) analysis invariably begins by searching patent literature for issued or pending patents, and obtaining a legal opinion as to whether a product, process or service may be considered to infringe any patent(s) owned by others. It is worth bearing in mind that some of the limitations on patents also offer potential opportunities. For example: patent protection is territorial; patents have a limited duration; patents have limits of scope (i.e. any aspect of an invention not covered by the claims is not considered to be protected).
An FTO analysis based on the search of patent literature is just the first step. If the patent search reveals that one or more patents do limit a company’s freedom to operate, the company must decide how to proceed. Assuming that the blocking patent is valid, options include: purchasing the patent or licensing in; cross-licensing; or inventing around (meaning steering research, or making changes to the product or process in order to avoid infringing on the patent(s) owned by others).
Invalidation Searches
An invalidity or opposition search is to identify patent and non-patent documents which may impact the claims of a specific patent. This can help block patents and establish solidity of a patent portfolio which may be useful for licensing or company acquisition. In most cases, the objective of an invalidation search is to revoke or invalidate or oppose a registered/ granted patent.
White Space Analysis
White space analysis is a methodology that identifies the absence of patents in a particular product or technology area as a primary driver of innovation decision-making. Thus, ‘white spaces’ are gaps in a technology landscape that have potential for attaining exclusivity. Patent white space analysis is therefore an important aspect of any innovation assessment: if a company is introducing a new product or technology, it needs to know at an early stage whether it can own the fruits of its innovation efforts, and whether it might be sued for infringement by a third party.
Opinions
For clients seeking to establish whether or not their new products or processes might be entitled to patent protection, we prepare patentability opinions along with search reports. Our knowledge of the nuances of this area of the law is fully supported by our first-hand practical and technical understanding of the technologies that drive many of our clients’ businesses. We regularly render timely patentability opinions for clients who are contemplating the development of new products and who wish to assess patentability of the products. By generating opinions that determine the patentability of a target product in the early stages of its development, we are able to help clients save both time and money.
Related Services
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