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Patent Searching: Boon or Bane?

Patent searches are an important commercial tool for reasons depending on the type of search being conducted.  However, the mere act of conducting patent searches to obtain relevant information about the background (or prior art) of your invention inevitably raises obligations to disclose the results of that search to various patent offices which require such information, often many years after the fact.  This article discusses the types of patent searches that are available and applicable at various stages in the life cycle of a patent application and, ultimately, a granted patent, and discusses the perceived disadvantages that may arise as a result of conducting such searches.

Novelty Search

The main reason most inventors do, and should, conduct patent searches is to have an indication of the novelty and/or inventiveness, and ultimately the patentability of their invention.  Knowledge of relevant prior art at an early stage of the patent process can be an invaluable indicator of whether it is commercially feasible to pursue patent protection for your invention.  Thus the most common type of patent search is currently termed a Novelty search and it is this type of search that will be conducted by patent Examiners in each patent office where patent protection is sought.  Indeed most of search conducted is the international search performed by the bureau of WIPO in respect of each PCT patent application. The outcome of this international search is typically used as a guide to the inventor and all applicant of the patent application is to the type of prior art in existence in relation to their invention, and also the likely difficulties they will face in obtaining a grant patent in each country during the National Phase state of the patent procedure.  If the international search is unfavourable can be taken as an indicator that continuing to seek a greater patent for the invention will either be a very costly exercise at each patent office, or unfeasible together and must be application may be allowed to lapse.  The timing of this search is such that the decision to continue with the patent application or to allow it to lapse can be made prior to the outlay of the large expenditure required for entry into their countries of interest during the National Phase.

Of course such a Novelty Search can be obtained at an earlier stage in procedure, at least in Australia, where there is the optional International–Type Search (ITS) which can be requested in respect of a Australian filed provisional patent application. The ITS Report is essentially identical to the search received as part of a PCT filing, although it is obtained prior to the deadline for filing the complete PCT application so that the applicant may make a decision prior to the outlay of expenditure for the PCT application as to the viability of pursuing patent protection for their invention.

Indeed, prior to even filing of a provisional patent application, it is often a relevant exercise for the inventor was to conduct their own private searches of patent literature to obtain a feel for the extent and nature of prior art presently in existence relative to their proposed invention. If relevant prior art happens to be found at this early stage, this may influence the decision to engage a patent attorney and filed provisional application in the first place or either the forewarning knowledge obtained by conducting patent searches may be positively applied to the research and development of the inventors proposed invention so as to take into consideration all the relevant prior art such that the inventor’s invention is at least likely to be novel over this existing prior art.

Other Types of Patent Searches

In addition to novelty searches, a patent search may also be conducted for a variety of other commercial reasons.  Other types of patent searches include:

Freedom to Operate Search

A Freedom-to-Operate search is a search conducted of patent databases in a particular country or selection of countries to determine whether any relevant existing patent rights may exist relevant to a new or proposed product that a party intends to commercialise or sell in those jurisdictions.  Conducting freedom to operate searches across many jurisdictions is used to assess the size of the market for the proposed new product.  Such searches are particularly relevant for products which have a global appeal where the market size can be quite large and distributed across many patent jurisdictions.  Existing patent rights in any of those patent jurisdictions may seriously dampen the feasibility of providing the product and making it available for a global market.

The Freedom-to-Operate search is limited to existing rights only held by other parties which may be used against the patent owner to, at the very least, thwart or hinder the commercialisation of the product or idea, or is the worst case scenario, to sue the patent owner for infringement of such existing patent rights.

Infringement Search

The goal of a Patent Infringement Search is to determine whether your new product or service will infringe upon any existing and enforce patents, and so is related and quite similar to the Freedom-to-Operate search, however there is an important distinction.

Infringement and Freedom-to-Operate searches both seek to ensure that new products or services can be commercialised without fear of litigation from existing patent holders for infringement of any currently in force patents.  However infringement searches typically only focus on a single patent jurisdiction as opposed to Freedom-to-Operate searches which are generally more broadly applied i.e. infringement search is tasked with determining whether the proposed new product will infringe an in-force patent in a particular country whereas a Freedom-to-Operate search tasked with answering the question: how large is the feasible global market size for my new product?

State-of-the-Art Search

Within the field of patents and patent law, as opposed to the marketing arena, the term state-of-the-art is a legal concept used in the process of assessing and asserting novelty and inventive step in relation to a particular invention, and is generally regarded as being synonymous with the legal term prior art.  In contrast, in marketing speak, state-of-the-art is generally taken to indicate the best available implementation of a particular product or a product which has achieved the highest level of general development at a particular time.  And the use of the term in patent law, however, “does not converge even superiority, let alone the superlative quality the [marketing professionals] would have us ascribed the term” [Jack Smith, “Is ‘State of the Art’ Patently Ill Defined?“, Los Angeles Times (June 15, 1988)].

A state-of-the-art patent search is a search of all existing patent documentation to gain an overall perspective of the particular technical field in which the searcher is interested.  It is typically the broadest and most general scope of patent search available and is used as a guide to developing a research strategy in the particular technical field.  The state-of-the-art search is useful in identifying particular areas of the research field that have received much research focus as well as those areas which have not received as much attention, and therefore the search can be useful in guiding the focus of the searcher’s research activities, for example to design around any prior existing patent to techniques or ideas.  The state-of-the-art search can also be used to identify potential competitors active in the technical field in which the searcher is interested and also provide a chronological indication of the ongoing development field dwellers in identifying particular research areas which may not be commercially viable in which case the searcher maybe saved from applying significant resources to a problem which has little chance of success.

Why conduct patent searches?

As discussed above that of many different types of patent searches available depending on the particular outcome this searcher is interested.  Indeed a researcher make that a number of patent searches in relation to a single product.  For instance a searcher they conduct a state of the art patent search prior to the commencing a research programme; a novelty or patentability patent search to identify any specific prior art relevant to a product developed as part of the research programme; and also a infringement search prior to bringing the particular product to market to determine if any existing patent rights are likely to cause issued to the marketability of the product and or any liability would be incurred by the research bringing the particular product market in terms of potentially infringing another party’s in-force patent rights.

Conducting the appropriate patent search and an appropriate time during the development life cycle can save the searcher or their company significant costs that may be incurred in researching and developing a particular product which already exists may focus this searcher’s research programme on specific improvements to currently existing technologies, and safeguard against any potential legal action against the company should they unwittingly develop a product and bring to market that may infringe the patent rights of another party or competitor.

Patent searches that are conducted prior to the filing of a patent application can significantly strengthen the patent document and may ultimately result in strong patent for the searcher. For instance, knowledge obtained from a patentability search provided to patent draftsman will enable the draftsman to specifically focus the patent specification on the technical features of the vegetables invention which are not disclosed in any of the known prior art. Also, documentation relevant to the adult or inventive step of a patent application which is provided to a patent examiner allows the examiner to assess the relevance of the prior information to the particular patent application. If the examiner deems prior documentation relevant to the patentability of the claims of the patent application, the inventor or the agent can amend the patent application claims in order to distinguish from the prior art disclosure ultimately achieving a stronger patent.  Also, a prior art document which at first glance may appear to be relevant to the patent application may not in fact be relevant from the perspective of the patent examiner the act of providing document to the exam for assessment provides a greater level of comfort to the inventor that the resulting patent is in the novel and inventive.

Drawbacks of patent searches

The main drawback of conducting patent searches is an obligation imposed by various patent offices to disclose the results of any searches.  Such an obligation is triggered at various points in the patent process in certain countries. The inventor(s), patent owner(s), patent attorney and anyone else associated with the invention is obligated to disclose their knowledge of anything (particularly documentation) that may or may not be relevant to the patentability (i.e. to the novelty or inventive step) of a patent application in that country.  This obligation is discussed in greater detail by our colleague Martin Earley in his report: What do I need to disclose about “prior art?”  In this report, Mr Earley makes the comment that “a patent obtained through concealment of relevant prior art is not a reliable commercial asset”.  This sentiment is  held by most, if not all, patent attorneys.

By way of example, an inventor may have invested significant resources (time and/or money) to a particular patent application only to later discover, either through a formal examination report by a patent examiner or through their own private searching, that their invention is anticipated by a prior publication. On receiving this information, the inventor may be tempted to choose not to disclose such knowledge in an attempt to mitigate the risk that the patent application is subsequently found to be invalid.  This approach is highly risky and is not recommended particularly in respect of a patent application lodged at the United States patent office (although the US is not the only patent office to impose obligations for disclosure of prior art).  The obligation imposed on inventors and any individual connected with the prosecution of the patent application by the USPTO to disclose any potentially relevant knowledge to the patent examiner is absolute: if any potentially relevant information is known and is withheld from the patent office during examination, and it is subsequently discovered that the patent owner, inventor or any of their associates knew of the relevant documentation prior to the grant of the US patent, the patent may be deemed to be invalid and unenforceable.  The act of withholding relevant information from the Patent Office may even be found to be fraud against the Patent Office by intentional nondisclosure of the relevant information.  As it can be imagined, having a charge of fraud levelled against a patent owner cannot bode well, particularly for the patent in question.  As discussed above, disclosing any relevant information to a patent examiner is in the patent owner’s best interest since it will ultimately result in stronger patent protection.  That is, the patent owner can be confident that their patent is valid with respect to all known relevant information that has been considered during the prosecution and examination of the application.  Accordingly, intentionally withholding any relevant information is counter-productive at best and, at worst, the withheld information can be a ticking time bomb which may come back to haunt the patent owner at any time during the life of the granted patent.

At first glance, the risk of conducting patent searches in respect of a patent application in which significant resources have already been invested mainly initially appear to be against the patent owner’s interests.  However, early detection of relevant prior art can save the patent owner significant time and resources in pursuing patent protection for an invention which ultimately may not be patentable due to existing prior art.  Early knowledge of any potentially relevant prior that is disclosed to your patent professional generally will result in either: stronger patent protection for the patent owner; or a purging of patent applications for inventions that ultimately may not be novel or inventive in light of prior art, thus saving the patent owner significant resources which may be directed to more commercially viable projects.

A further disadvantage is that, due to the nature of the patent system, no patent search can ever be completely comprehensive.  Patent applications remain secret until they are published, typically after 18 months from the initial priority date.  Regardless of how much money is invested in the search, patent applications less than 18 months old will not ever appear on a publicly accessible database, and therefore will also not appear in any patent search.  Despite this, however, 18 months is only a short time in the history of patent filings and thus it is usually worth taking the risk that some highly relevant patent application may have been filed in the 18 months prior to conducting your own search and possibly filing a patent application to your invention.  Certainly, if no searches are undertaken, then no knowledge is obtained about any possibly relevant prior art which merely imposes a greater risk that the patent application may subsequently be refused on the basis of prior art discovered by a patent Examiner.

Conclusion

There may be some perceived disadvantages of conducting patent searches, most notably the instance where it is discovered that the invention has already been disclosed in a prior document or patent.  However, it is the writer’s opinion that the benefits of a quality patent search at an appropriate time significantly outweighs any such perceived disadvantages. Particularly where it is discovered that a potential invention has been previously disclosed or would in fact infringe the rights of existing patents, significant resources can be directed to other commercially viable projects and potential uncertainties around the validity of a particular invention can be largely eliminated.

Accordingly, it is strongly recommended that quality patent searches be conducted at the appropriate time for each of your inventions or merely to establish the state-of-the-art of a particular technical field and so to direct your research focus to a potential application or product that is ripe for commercial exploitation.

Each of Baxter IP’s patent professionals are experienced with the various types of patent searches available and can provide advice on their appropriate use.  If you would like to discuss patent searching with respect to your current situation, please contact us.