According to the United States Patent and Trademark Office (USPTO), in 2020 alone, there were over 645,000 patent applications filed in the United States, many of which likely began with a patent practitioner conducting a patent search. Conducting a patent search can be a complex, time-consuming process, and determining what you are trying to accomplish with the search can often be just as hard. There are four main types of searches, depending on the desired results:
- Patentability search
- Freedom to operate search
- Landscape search
- Invalidity search
Although each of these is regularly used, patentability searches are one of the most common searches a patent practitioner will conduct.
Patent practitioners, such as patent attorneys and patent agents, regularly perform patentability searches before submitting a patent application to help determine whether an invention will be patentable. When conducting a patentability search, a practitioner's primary goal is to determine whether an invention is patentably distinct over prior art references (i.e., any reference published or filed before an inventor's filing date).
Prior art could be almost anything, including but not limited to:
- Patent applications
- Articles in a journal or magazine
- Products you might buy online
- Any of these things that have existed in the past
In a patentability search, we look for prior art references that are similar enough to the invention, or part of the invention, which might cause the United States Patent and Trademark Office (USPTO) to believe that the invention is not new or is something obvious compared to the prior art references. Once all of these references have been reviewed, we perform analysis to determine which of these references might be most important. In the case of a professional patentability report, the inventor is provided all of this information in the form of an itemized report to help them better determine how to proceed with protecting their invention.
Freedom to Operate Searches
Patent practitioners regularly use freedom to operate (FTO) searches to find issued patents or published patent applications before (or, in some cases, during) the sale or use of a product or method to determine whether one can legally practice a method or system without infringing on another inventor's intellectual property (IP) rights.
This type of search only includes unexpired patents and patent applications, as it is impossible to infringe on an expired patent. There are some instances where a patent might be abandoned but become revived, but this topic will be further discussed in a future article devoted to FTO searches. Patent practitioners often include a complete listing of findings in professional FTO reports, like the patentability search reports mentioned above, and an analysis to help an aspiring inventor determine which references, if any, are the most relevant to the system or method being searched.
Patent practitioners regularly use landscape searches to find the largest possible variety of related items or publications before putting full development into a product or method in a field of technology. This field of technology could be quite broad, such as medical devices in general, or narrow, such as a specific medical device type incorporating medicated linings.
Commonly, practitioners use this type of search to help determine whether anything one creates, be it a method, a system, or an apparatus, would be patentable. One should understand, however, that while this type of search may lead them to the conclusion that they might not make anything patentable, other types of IP protection may be available. Similar to a patentability search, patent practitioners would look for any prior art, not just patents or patent applications, as well as references both active and expired. However, unlike patentability searches and FTO searches, analysis is not performed in landscape searches.
Patent practitioners regularly conduct invalidity searches after someone else's patent or patent application has been published and is being brought against an individual in order to determine infringement. This may be expressed by threat of suit for patent infringement, reaching out to try to receive licensing payments, or cease and desist letters. Practitioners commonly use this type of search to try to find prior art for the patents or patent applications in question that the USPTO might have missed when examining the application, and which may prove the patent or patent application to be either non-novel or obvious and, therefore, not meeting the requirements for patent protection.
If a practitioner finds prior art, there is potential for an argument that the patent application should not issue or that the issued patent should not have been issued in the first place. These arguments are often made in inter partes reviews, where the patent has already been issued and one is trying to remove its protection, or third-party submissions, where the patent has not yet been granted and one is trying to prevent it from issuing with its current claims.
Professional invalidity search reports generally provide a list of references that, when used alone or in combination, teach every aspect of the claims of a patent or patent application in question. Patent practitioners may also convert these invalidity search reports into “claims charts” showing where each claim component may be found in the newly cited references. These and other aspects of invalidity search reports will be discussed further in a blog post devoted entirely to invalidity searches.
How Gallium Law Can Help
We know that searching through millions of patent applications, both in the United States and worldwide, can be confusing, especially if you have little experience, and that is why we are here to help. At Gallium Law, our IP professionals handle all types of patent searching and can help you with everything from the first steps of a search to what to do with the information we find. You may be a business or an individual; in either case, you deserve to know what IP is available to you, what you are up against, and to have someone by your side. Contact us today by filling out this online form or contacting us at 651-256-9480 to schedule a Free and Confidential Consultation.
*The information provided in this article is not legal advice and should not be relied on as such. This article is meant for informational purposes only and is intended as a starting point in your search for answers to your legal questions.