What is a patent search?

Conducting a patent search is the first step to determine the viability and eligibility of your invention patent protection. A patent search will reveal if an invention is currently patented in Australia or internationally.

A patent search involves a review of the available patent data using the International Patent Classification (IPC). The IPC divides technology into eight sections with approximately 70,000 subdivisions, establishing a uniform classification that enables patent documents to be searched and retrieved.

Why conduct a patent search?

Patent searches form an integral part of any initial invention assessment and patent protection strategy. Securing rights to an invention by way of patent provides you with a valuable monopoly over that technology, to exploit and commercialise to the exclusion of others.

An initial patent search can provide valuable insight into the current state of the marketplace, including the level of differentiation and inventive value your invention is likely to provide.

This patent search will help us to map out an appropriate patenting strategy for your invention. Determining the right patent strategy will maximise the protection of your invention as well as minimising the time and money that can sometimes be associated with the patenting process.

A search can also help you to avoid infringing someone else’s patent, which might otherwise lead to a costly legal dispute.

What type of patent search do I need?

There are a number of different patent searches. Actuate IP's patent attorneys can advise as to the most appropriate patent search for your particular circumstances and budget.

These searches include:

  • prior art searches (also known as ‘novelty’ or ‘patentability’ searches)
  • infringement searches
  • freedom to operate searches
  • state of the art searches
  • competitor/name-based searches.
The function of a prior art search is to establish whether the invention is ‘novel’, a prerequisite to securing a patent. There are various levels of prior art search, and we can develop a search strategy based on your requirements as well as your budget. Your search strategy might include various international patent registers, as well as marketplace searches to determine whether a similar product already exists.

Infringement searches are conducted to minimise the risk of infringing an existing patent right when developing, offering or selling a particular product or business method. Two common situations where infringement searches are conducted include:

  • where products are being imported and the importer wishes to determine whether there are any existing patent rights associated with the products
  • where there are potential concerns regarding either the development or use of a potential invention.
Infringement searches can identify existing patent rights in a given country and assess these claims to determine if the use or sale of a product is likely to infringe on these rights in Australia or any other country of interest.

A freedom to operate search is the same as an infringement search. This type of patent search can also be used to determine whether an existing patent’s term has expired or is otherwise not enforceable.

State of the art searches provide valuable information on current technology relevant to the invention and can also be used to identify potential competitors and commercial partners.

Competitor/name-based searches are used to ‘keep an eye’ on competitors and to discover what patents competitors have registered or applied for, as they may be closely related to your patented technology or field of business.

Can I conduct a patent search myself?

It is possible to conduct your own patent search and this is often a good starting point. Conducting your own marketplace searches can tell you if your invention already exists.

However, in order to conduct a detailed patent search, it is advisable that you engage the assistance of a qualified patent attorney. Searches require an in-depth understanding of the law and the legislation that applies to patents.

According to IP Australia, more than 40 million patent documents have been published worldwide, with almost a million new disclosures added each year.

How can Actuate IP assist?

Actuate IP’s patent attorneys can conduct a patent search on your behalf. An Actuate IP patent search includes a detailed search report and advice that will outline short- and long-term strategies to secure registered rights and brand protection.

Actuate IP also offers a regular ‘patent watch’ service, where we devise a strategy to watch the patent filing activities of your competitors or patent applications relevant to your invention or field of business. A patent watch service will identify whether any relevant patent applications may potentially infringe upon your own patented invention or whether, if granted, you might infringe the identified patent.

Importantly, our advice will enable you to assess all commercial and legal risks prior to committing to a course of action.

Contact Actuate IP to learn more.