A Patentability Search is the first task on the road to obtaining protection for your invention. Where to go and how to start is the oft asked question. While all Patentability Searches have the general goal of identifying inventions with the same characteristics as the topic of the search (Prior Art), there are certain distinctions in purpose of each type of search. Presented here are four common search objectives and their differences.
Novelty Search
The Novelty search is the most common type of patent search. Novelty searches are conducted when an inventor has an invention which he is interested in patenting, and wishes to determine if anyone has previously invented anything similar enough to preclude applying for a patent. Novelty searches generally have no date constraints on the prior art. If Prior Art on the invention is found, regardless of whether it came from yesterday or 100 years ago – it is relevant. The reason for this is that, according to patent law; anything that has already been disclosed to the public, in any manner, at any time, cannot be patented.
Validity Search
If your Novelty search shows that your invention fails to pass the novelty test, one way to overcome the lack of novelty would be to perform a Validity Search for the patent granted to your competitors. The object of a Validity Search is to prove that the patent may have issued (or allowed specific claims contained in the patent) in error. Patent Examiners are very thorough in what they do, but given the time and resource constraints they work under and the sheer volume of the data that must be examined and considered, occasionally a relevant piece of Prior Art is missed and a patent is granted that is not valid over Prior Art.
A common situation is that a company has made a product that infringes upon the patent of another entity and are being sued as a result. In this case, the Validity Search would be conducted to uncover Prior Art that invalidates one or more claims in the rival patent, taking away the owners legal right to sue for infringement damages.
In a Validity Search, the date FILED determines the Priority Date. A Validity Search looks for references that the Patent Office missed, prior to the date of filing and thereby provides evidence that the subject claim should have been disallowed on the grounds that the invention was already in the Public Domain at the time the patent was filed. Only the first inventor can hold a valid patent.
In a Validity Search, the idea is to find prior art that is relevant to the validity of the CLAIMS of the subject patent, not the general idea. As each claim is examined one by one in the search for Prior Art, this is normally a more time-consuming search than a novelty search, therefore more costly.
Infringement Search
Also referred to as "Right-to-Use Searches" or "Freedom-to-Operate Searches, this type of search is done with the goal of determining if a proposed product violates any ACTIVE patents to determine if product changes are necessary or possibly to abandon the product. An Infringement Search is only concerned with the CLAIMS of active patents, not the descriptive elements found elsewhere. Expired or abandoned patents do not affect an Infringement Search, nor does non-patent Prior Art.
Infringement searches are generally conducted by trying to prove that no in-force patents exist with claims that would cause a conflict. If you find an active patent that could be deemed to be infringed on, a viable alternate might be to try and prove that the invention was already in the public domain, and therefore safe to use. This would be done by showing that the invention had at one time been disclosed, but that the disclosure occurred over 20 years ago.
State of the Art Search
Generally, a State-of-the-Art Search is conducted to quickly show what is currently being developed in a given field. Representative patents of a specific technology are selected to provide an overview of the field. A more complete search where all patents of a given technology are presented is called a Collection Search (in general search references, the terms may be used interchangeably).
There are instances when it is advisable consult patent professional to find out how best to validate your claim to your invention. If you are looking for a reputable Patentability Search partner, visit the Patent Research pages at www.bandacorp.com wee how we can help you secure your invention, beginning with a thorough and accurate Patentability Search.
“Patentability Searches” Defined
Novelty Search
The Novelty search is the most common type of patent search. Novelty searches are conducted when an inventor has an invention which he is interested in patenting, and wishes to determine if anyone has previously invented anything similar enough to preclude applying for a patent. Novelty searches generally have no date constraints on the prior art. If Prior Art on the invention is found, regardless of whether it came from yesterday or 100 years ago – it is relevant. The reason for this is that, according to patent law; anything that has already been disclosed to the public, in any manner, at any time, cannot be patented.
Validity Search
A common situation is that a company has made a product that infringes upon the patent of another entity and are being sued as a result. In this case, the Validity Search would be conducted to uncover Prior Art that invalidates one or more claims in the rival patent, taking away the owners legal right to sue for infringement damages.
In a Validity Search, the date FILED determines the Priority Date. A Validity Search looks for references that the Patent Office missed, prior to the date of filing and thereby provides evidence that the subject claim should have been disallowed on the grounds that the invention was already in the Public Domain at the time the patent was filed. Only the first inventor can hold a valid patent.
In a Validity Search, the idea is to find prior art that is relevant to the validity of the CLAIMS of the subject patent, not the general idea. As each claim is examined one by one in the search for Prior Art, this is normally a more time-consuming search than a novelty search, therefore more costly.
Infringement Search
Infringement searches are generally conducted by trying to prove that no in-force patents exist with claims that would cause a conflict. If you find an active patent that could be deemed to be infringed on,
a viable alternate might be to try and prove that the invention was already in the public domain, and therefore safe to use. This would be done by showing that the invention had at one time been disclosed, but that the disclosure occurred over 20 years ago.
State of the Art Search
There are instances when it is advisable consult patent professional to find out how best to validate your claim to your invention. If you are looking for a reputable Patentability Search partner, visit the Patent Research pages at www.bandacorp.com wee how we can help you secure your invention, beginning with a thorough and accurate Patentability Search.