Patent searches are aimed at placing you in a position to assess the viability & eligibility of your invention. Searches are a recommended first step to assess whether the investment required to undertake the patent process should in fact be outlaid. Patent searches also provide valuable insight into the state of the current technology in the marketplace and hence the level of differentiation or value your invention is likely to provide.

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 monopoly to that technology, to exploit and commercialise to the exclusion of others.

Actuate IP provides a variety of patent searches to suit your unique needs.  These searches include:

• Prior art/novelty searches
• Infringement searches
• Free to use searches
• State of the art searches
• Competitor/name based searches
• Patent watch service

Patentability (or Prior Art/Novelty) Searches

Patentability searches are aimed at identifying the ‘prior art’ – that is, determining whether the invention is ‘novel’, a prerequisite to secure a patent. Novelty of an invention requires that the invention has not been publicly disclosed in a publication worldwide or has not been publicly used in worldwide prior to the filing date of the patent application.

Novelty/prior art searches provide a useful indication as to the patentability of an invention. They serve a number of purposes including:

• To identify the prior art, the results of which can assist and provide the potential patent holder with the development of its invention
• To determine whether as a result of the prior art the invention can in fact be protected
• Assist the patent attorney with claim drafting to minimise issues arising at the examination stage.

Various levels of novelty/prior art searches can be conducted to suit both need and budget, assisting with the implementation of a proper patent strategy from the outset. These can include not only the various international patent registers but also marketplace searches to determine whether the same or similar products already exist.

There are also a variety of other searches of use to the potential patent holders including infringement searches, state of the art searches, competitor searches and various patent watch services.

Infringement (or clearance) searches

Infringement searches are conducted primarily in two situations:

1. Where products are being imported and the importer wishes to determine if there are any existing patent rights associated with the products
2. Where there are potential concerns regarding use of the invention. Where the invention falls within the claims of another patent, such use can be the subject of legal proceedings for infringement by the holder of that patent.  

Infringement searches are aimed at identifying existing patent rights in a given country and assessing the claims to determine if use/sale of a product is likely to result in infringement.

The recommended approach for a new invention

As a starting point we recommend a novelty search to ascertain whether the invention can in fact meet the eligibility requirements to secure a patent.  We provide a varying level of searches ranging from preliminary to comprehensive to suit both budget and need.  

Beyond this initial search there are a number of other types of searches to assist in other aspects of the development and commercialisation process. State of the Art searches provide valuable information on current technology relevant to the invention assisting with invention development as well as identifying potential competitors and commercial partners.

Can I conduct a patent search myself?

It is possible to conduct your own patent search and this can often be a good starting point.  In particular, conducting your own marketplace searches to see whether your invention already exists is a good strategy. However, it is advisable that ultimately the search be conducted by a patent attorney.  Searches require an in depth understanding of the law and legislation which applies to patents.   

A patent search conducted by Actuate IP will be accompanied with a search report and advice, outlining short and long term strategies to secure registered rights and brand protection. Importantly, our advice will place you in a position to assess all commercial and legal risks and considerations prior to committing to a course of action.

Place an Online Enquiry to contact a Patent Attorney or call us on 1300 768 730.