Matthew Downing

Types of Patent Searches
Patent searches can provide peace of mind to a person who is interested in applying for a patent or even for someone who is entering the market with their new product.  While no patent search can be 100% foolproof, they may help prevent heartache, not to mention potential savings in investment on an invention.  If the medical adage “prevention is often better than the cure” is true, then surely so too is the legal equivalent  “prevention is better than litigation”. 
There are several types of searches to cover various scenarios that may be faced depending on what is wished to be done with a new product.

Novelty  
Has it been done before? This is the main question being asked when a patent novelty search is conducted.  Often this is the first step that is undertaken to help our attorneys determine if your invention meets the requirements of patentability before an application is made. This search is not restricted to any one nation; generally it will focus on International applications (WO), the United States, Japan and Europe due to the nature and content of internet based database tools.  This type of search should not be restricted to patents as any disclosure of your invention, such as in a journal or trade magazine, can also affect the results.  Due to this, this type of patent search is often conducted side by side to a general internet search.  Ideally, a successful novelty search will identify no records that are similar to the invention that is the basis of the search, because any records that bear a close similarity may cause patentability problems if an application is made.
While a search is a standard part of the Australian patent application process, it will always have the added cost of application fees.  Having a search conducted before an application is made can provide a guide to the invention meeting or failing the patentability requirements even before an application is made.

Infringement
 Imagine launching a new product onto the market, only to receive a letter months down the track threatening legal proceedings relating to the use of the product?  This can be the end result if a product is used and another party already has rights relating to it.  One way to avoid this scenario is to have an Infringement, or freedom-to-use, search conducted.   This type of search is restricted to the country that is of interest, for example if a company wishes to market their product in Australia the search would be restricted to Australian patent material only.  This search is only targeted at identifying patents that have existing rights or applications that are pending.  Much like a novelty search, a lack of records that bear a close similarity to the invention being searched is considered a good result, as this implies that the invention will not infringe upon any existing rights.
This type of search is often best suited for the business that is not interested in obtaining patent rights, but wants to make sure that their product will not infringe on the rights of another as a result of any use of the product.  Positive results may also lead to a novelty search being conducted to investigate if the product may be patentable.
Invalidation
 
This is a rare search option and is very similar to a novelty search.  The main difference is that records searched are limited to those that pre-date the filing date of an accepted or granted patent to assist with opposition or invalidation.  The subject matter of the search is always based on what the claims of the target patent disclose.  Generally, the main aim is to find a relevant record that originates in the country that the patent that is being attacked originates from.
It is important to note that while this search may assist in removing an obstacle to using a product in Australia (or any other nation that allows invalidation or opposition proceedings), it may not imply that your product is patentable due to the prior publication of the patent being opposed or invalidated.

Name
 This type of search is used when you know the name of an applicant or an inventor and is one of the simplest and quick searches that can be performed.  It can be used to gain information on a competitor by seeing what they have in their IP portfolio or you may wish to see if a recent development by a competitor has been patented or has been applied for.   These results can be used for novelty or infringement purposes as well as corporate intelligence.

Family Search
Patent laws in many nations allow for “convention” filing.  A convention application can result in many applications for the same patent in multiple countries all stemming from the same original, or parent, application.  These groups are often referred to as patent families and there are internet databases that allow investigations to see if an application you are interested in is part of a family.  These searches can be conducted side by side to an infringement search or an invalidation search if a specific piece of prior art is identified from another country to see if it has a family member in another country you are interested in.

Patent Watches
A watch is a periodic review of specific information, be it a monthly name search or even a review of the status of a specific patent application.  Depending on your requirements a patent watch can generally be tailored for you.  A watch can alert you to when a competitor makes a new application, or when a critical date on a patent application is due to approach.   A watch can help you avoid missing an event, which may result in an application for an extension of time and its associated fee, or missing an opportunity all together.

All of these search options can be tailored to specific requirements and budgets.  From comprehensive searches that make use of classification codes, to preliminary searches that search key words or names relating to your invention.  No matter what the invention is, from a potato peeler to new developments in medicine, a search is often the best place to start.

For further information contact us