Important Limitations of Patent, Registered Design and Trade Mark Searches

IP Searches are widely used to mitigate validity, registrability, freedom-to-operate and other commercial risks. We carry out IP searches and analysis with the greatest of care. However, there are some limitations to what can be realistically achieved in searching and this document details some of these limitations for completeness.

COMPLETENESS OF RECORDS

Any search of patent or registered design literature is subject to the accuracy, completeness and classification of the records searched. This applies to any records created or provided by third parties, including the Official records of Patenting Authorities such as IP Australia, as well as to the records provided by any other patent information provider, whether available by subscription or free-of-charge, and whether provided in electronic form or otherwise. We cannot accept responsibility for the accuracy of these external records, which makes it impossible for us to guarantee that every relevant item is revealed.

SEARCH STRATEGY

Virtually all searches are computer based, at least to some extent. Any computer-based search is subject to the scope and The search has been conducted in accordance with the strategy we have detailed and the results will be limited accordingly.

While our search strategies are designed to yield the most relevant results within any imposed cost constraints, it should be appreciated that every search strategy inevitably reflects some trade-off between scope and cost. To keep our charges at a reasonable level, it is often necessary to restrict the search strategy to achieve greater precision in the records retrieved. This involves a trade-off between reducing the number of records identified and the attendant risk that relevant records have been eliminated.

It is possible that a search using a broader strategy might locate further pertinent material. We believe that we have applied an appropriate search strategy, however, if you feel that another search strategy should be employed, or if you require the search to be extended in any way, please do let us know.

NO GUARANTEE

It is important to note that searches can never be conclusive, for many reasons, including those detailed in this document. The sheer volume of published patent and design literature available worldwide means it is impossible to guarantee that every conceivably relevant item is located.

CLASSIFICATIONS

Most computer-based searches are conducted using a combination of classification codes and keywords as search criteria. While searches based on classification codes are generally more reliable than those based on keyword searching, vagaries in the application of the codes by various authorities mean that searches of this type are inherently limited.

lnternational Patent Classification (IPC) searching comprises selecting the most relevant class but is dependent on consistency between countries when indexing similar types of inventions and our selection allowing for the variations. In particular, the United States index into their own classification and then provide a concordance of this classification with the IPC. The IPC is updated every five years. In each new addition classes may be added, deleted or moved. Records on the database are not updated, therefore searches in new IPC classes will only find records indexed in that class since the time of the introduction of the new class.

KEYWORDS

Keywords may not encompass alternative terminology for similar subject matter. Keyword searches look for a particular word or combination of words in the title and abstract fields of patents, in the title field of registered designs and in the mark field of trade marks. Selection of key words or descriptors for subject matter searches is subjective. Database searchers, database compilers and intellectual property applicants may use different words to describe the same or similar thing. Thus, the success of this form of searching is dependent on the likelihood of the keywords being in those fields of relevant records. Titles and abstracts may also not mention relevant subject matter present in the original document, leading to omission of that record from those retrieved. Furthermore, terminology in technical fields can change with time.

ACCESSIBILITY OF LITERATURE

Further, searches are normally restricted to prior published patent and registered design literature. Other forms of publication such as technical journals, reference texts, research papers and promotional literature are not normally accessed. Furthermore, there are some forms of prior art, such as instances of prior use, which cannot be systematically searched at all. For these reasons, a patent or design novelty search should only be regarded as providing a general indication of the state of the art in any particular technical field. However, if you would like more detailed information about the databases accessed, the strategies employed or the specific limitations associated with a particular search, or if further searching is required, please let us know.

ABSTRACTS

Searching involves the searching of patent titles and/or abstracts and some decisions as to the relevance of documents are made on the basis of these titles and/or abstracts. From time-to-time patent abstracts are misleading in their disclosure of the invention or the choice of representative drawing. There is no guarantee that such an abstract will be selected, even if the document is relevant to the subject matter being searched.

COMPUTER BASED SEARCHES

Virtually all searches are computer based, at least to some extent. Any computer-based search is subject to the scope and accuracy of the databases searched, as well as the reliability and functionality of the associated interfaces. All patent and registered design databases are incomplete in some respects, being limited in terms of both historical and geographical coverage. This is particularly true for registered design rights, as many countries have not organised comprehensive and readily searchable public databases for this form of property. Further, not all kinds of patents, design rights or stages of publication are captured for many countries. It is also often difficult to establish the exact extent of historical and geographical coverage, the date at which specific data becomes searchable in respect of particular countries and the currency of the available records.

UNPUBLISHED AND BACKDATED APPLICATIONS

An unavoidable limitation of any patent or registered design search is that it cannot reveal detailed information on patents, registered designs or applications therefor that are not yet officially published, although basic bibliographic data may be available for some unpublished applications.

In most countries, including Australia, patent applications are not eligible for publication until 18 months from the earliest priority date and there are many reasons why even in those countries, applications may not be published or available for searching for even longer periods. Notably, the United States has only recently adopted the practice of publishing applications prior to grant and many US applications are still only published at grant for a variety of reasons. In some other countries, patents are only published at grant so any pending applications will not be revealed. There may also be further delays between publication and implementation of the associated information onto the relevant databases. Typically, design images are not published until registration.

Further, by International Convention, it is possible to file an application in one jurisdiction and subsequently to claim priority from that application when filing a later corresponding application in another jurisdiction. Accordingly, it is possible that applications may be filed in Australia or elsewhere after a search has been conducted and that such applications may claim an earlier priority date. This may require searches to be updated at a later stage in order to cover the relevant hiatus periods. However, we would not do this in the absence of specific instructions to that effect.

RELATED AUSTRALIAN PATENT APPLICATIONS

A patent or application that has ceased or lapsed, including a lapsed provisional application, may provide priority for a related patent or application that is current. A particular problem with the Official Australian records exists in relation to the cross- referencing of certain patent applications and patents to the relevant priority documents, largely due to the implementation of a new database by IP Australia. The problem manifests in a number of ways. For example, in circumstances where a provisional application was recorded on the old database, and a subsequent complete application is recorded on the new database, the record for the provisional application may identify it as lapsed but will not identify the related current application. Even where both the provisional and complete applications are recorded on the new database, the record for the provisional application will not identify a later application claiming priority from it. Other applications (such as divisional applications) which are recorded on the new database may not be correctly linked to parent cases on the older databases.

We usually endeavour to overcome these problems by searching a combination of inventors’ names, application titles and priority dates. However, small variations such as a change in title and the omission of one or more inventors can make related applications virtually impossible to locate. Further, PCT applications filed after 1 January 2004, which designate Australia, no longer automatically enter the new IP Australia database. These applications will only be entered into the new database if and when they enter the national phase in Australia.

OTHER RELATED APPLICATIONS AND PATENT OR DESIGN “FAMILIES”

Often an Australian patent or application has an equivalent in another jurisdiction. The term patent “family” is often used to describe a group of related patents extending across multiple jurisdictions. However, the term “family” is defined in various ways by different database producers, depending on the relationship between a patent document and its priority or priorities. Complex structures can develop when applications claim priority from different earlier applications, making it difficult to ensure that family searches identify each and every equivalent document.

Further, family searches are also subject to the limitations identified above in relation to computer-based searching and unpublished and backdating applications. We endeavour to address these issues by searching multiple databases. However, the inherent complexities that can arise and the limitations in the databases currently available, mean that it is impossible to guarantee that a family search has revealed every application in a patent family. Similarly, an Australian design application or registration may have an equivalent in another jurisdiction. Generally speaking, “family” searches in respect of registered designs are not possible. However, we can arrange for separate searches in other jurisdictions if required.

NAMES

Searches for names can only reveal records in the particular names searched. They may not locate potentially relevant patents or applications filed in other names or even variations of the names searched. If the name of an organisation changes or if the ownership of a patent or application has changed, the relevant database may not be amended. Conversely, on some databases only the name of the current applicant, patentee or registered owner is searchable. Furthermore, the names of authors and inventors are sometimes not recorded at all.

Results are often also made less reliable by inconsistencies in the indexing of names. For example, the ad hoc use of abbreviations, the omission of elements of an organisation’s name, non-standard elements in names and inconsistencies in the transliterations of non-Roman script into English will all influence the reliability of the associated search results. The only way to cover these possibilities is to conduct full subject matter searches, which are inevitably more time consuming and expensive than a straightforward name search.

GEOGRAPHICAL LIMITATIONS ON ADVICE

Any search and associated infringement, validity or patentability advice provided in relation to a specific jurisdiction is not necessarily applicable in other jurisdictions. Consequently, in most cases, such advice needs to be provided on a country-by- country basis. This is particularly so in the case of infringement searches. Accordingly, if you require a specific search or the associated advice to be extended geographically, please let us know.

COPYRIGHT

Copyright subsists automatically upon creation of an artistic or literary work, which can include prototype products, moulds, dies, industrial designs, sketches, technical drawings, specifications, circuit layouts, brochures, catalogues and computer software. However, because there is no formal registration system in most countries, there is no way that copyright can be systematically searched. In certain circumstances, particularly where actual copying or reverse-engineering is involved, these rights can extend to cover a wide variety of products and production equipment, even in circumstances where no other relevant patent or design protection exists. In such circumstances, it may be impossible to provide any guarantee as to non- infringement. However, we recommend that specific advice be sought in any circumstances where copyright may be potentially relevant. Similar comments apply in relation to unregistered design rights where applicable in some jurisdictions.

TRADE MARKS

There is a risk that an application had been made for a trade mark which had not been captured on the IP Australia system when the trade mark search was done. This is because there is a time delay between the date an application is received by IP Australia and the date that information is uploaded in their database. Australia is party to an agreement that allows applicants who lodge a trade mark application in one of a set of countries to file an application for the same trade mark in Australia afterwards and claim the overseas filing date as their filing date in Australia. They have a 6 month time limit from the date they file overseas to file in Australia. As such, trade mark applications may not show up in the database until they are filed.

MARKINGS

Before imitating a product it is advisable to investigate the product, packaging and advertising to note whether there are any claims to a patent, registered design and trade mark right.

SUMMARY

We have set out above some of the more significant limitations applicable to the most common types of searches. This is not, however, an exhaustive list of the limitations which may apply to any particular search. These vary considerably from case to case according to the particular factual circumstances. The important point to be aware of in general terms, is that for a variety of reasons, no search can ever be entirely conclusive. However, if you would like more detailed information in relation to the specific limitations applicable to any particular search, please do not hesitate to contact us.