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Prior Art Searches, Freedom-to-Operate Searches – what’s the difference?

There are two common document searches in relation to patents: prior art searches and freedom-to-operate (FTO) searches.

A prior art search is used to identify prior art documents in the world that might have disclosed your invention. The analysis of the prior art documents identified from the prior art search is able to show if the invention is new with respect to international patent documents and non-patent documents. Prior art search may be conducted before or after filing a patent application in Australia. If the inventor has been working in a particular area for a long time and has not identified any similar technology, it is recommended to file a provisional patent application to the invention with a view to establishing an early priority date. The earlier the priority date, the less the prior art documents that are relevant during examination. Following the filing of the provisional application, the inventor can request the Australian Patent Office (IP Australia) to conduct an International Type Search in order to have a more official idea of what the patentability of the invention looks like. An International Type Search Report (ITSR) will be issued by IP Australia within about two months.

As an alternative to filing a provisional application, the inventor can file an international patent application (i.e., PCT application). An International Search Report and Written Opinion (ISR/WO) will be issued within about two months from International Searching Authority (ISA) on the PCT application without a separate request.

It is not uncommon that the prior art search is conducted before filing a patent application especially when the inventor has invented something that is out of their expertise areas. However, it is recommended to have it conducted by an experienced patent searcher or a patent attorney.

Although a positive search report may be issued, whether it be the ITSR from the IP Australia, the ISR/WO from the ISA or the pre-filing search report, it is important to remember that an examiner is not bound by the results during examination. However a positive search report does mean that it is more likely to have a patent granted to the invention. An entrepreneur may also take advantage of the positive search report to attract potential investors or deter potential infringers, noting the later needs to be done very carefully with advice from your patent attorney.

There is a common misconception amongst patent applicants that once a patent is granted to their inventions, they will be immune from infringing others’ patents when the inventors make products in line with their own patents (i.e. that they will have freedom-to-operate – FTO). However, patentability and infringement are different and are determined using different legal tests. In reality, having a patent does not necessarily mean you will avoid infringement of other parties’ patents because the product as a whole may include features that others have patented.

Although there could be some overlap between a prior art search and an FTO search, in order to reduce the risk of infringement, it is recommended to conduct an FTO search before manufacturing or marketing your product.  The FTO search is designed to identify patents in a particular jurisdiction that the product may potentially infringe on. Therefore, the FTO search is limited to the patents granted in the particular jurisdiction in respect of which the search is conducted. It is possible that a product infringes on a patent in one country, but does not in another country. This makes it necessary to conduct the FTO search in each jurisdiction where you intend to market the product.

If there are some dangerous patents identified by the FTO search, you have multiple options in dealing with this situation. For example, you can attempt to change the product to avoid infringement (i.e., design around), invalidate the patent if it is not possible to design around the patents, or obtain a license from the patentee or even purchase the patent.