Type of Patent Searches
Patent Searches are key to evaluate the feasibility of a product/idea/invention before investing much time, capital, and resources, initially. Patent searches help in carrying out due diligence. Below are some of the Patent Searches commonly practiced in the Intellectual Property (IP) Industry:
1. Novelty or Patentability Search
Novelty searches are the most commonly requested searches. They are usually conducted to determine the likelihood of getting a patent. The main objective of carrying out such searches is to find whether the invention is patentable, but it does not account if the invention infringes any other patent in real life.
Typically, these searches are requested by entities and individuals with new inventions to determine if their invention is patentable (novel and inventive/non-obvious), and worth the time and money to pursue.
2. Freedom to Operate Search
A Freedom to Operate (FTO) search helps determine whether it would be wise to commercialize a product in view of existing in-force patents. An FTO search helps evaluate whether the product owner is free to operate and commercialize a product without fear of getting sued for infringement. One can say it is a must to follow the process before the commercialization of a product so as to mitigate huge losses due to infringement.
FTO searches are mainly focused on the claimed subject matter of the relevant in-force patents, rather than the disclosure/specification portion of the prior art. Due to this, FTO searches seem to be much more complicated, time-intensive, and significantly more expensive.
The goal of an FTO search is to determine whether a product infringes upon any of the patents found as part of the FTO search, wherein as Patents are territorial, FTO searches are also carried out on a country-by-country basis. In case the product is found to be infringing, the product owner can redesign the product, abandon the commercialization of the proposed product, design around the patent, or approach the patent holder for possible licensing negotiations.
3. Non-infringement Opinion
Non-infringement opinion is directed to a specific patent or a set of patents that have been previously identified. When a new product, process, or technology is created but is known to be similar to an existing patented product/process/technology, a non-infringement opinion should be obtained. A non-infringement opinion has similar steps involved in the FTO search except that no search is conducted because the patent at issue has already been identified. Also, just as with FTO opinion, deconstruction of independent claims of the relevant patents is done along with the analysis and comparison of the element by element to the proposed invention.
A significant advantage of conducting FTO and non-infringement opinions in advance of any allegation of infringement or commencement of a lawsuit is that if the search and opinion are performed by a reputable licensed patent attorney, it can serve an exculpatory purpose in the event that the inventor is actually sued for patent infringement. For instance, if a non-infringement opinion is obtained by an inventor and later in time the inventor is sued for patent infringement based on the same patent that was analyzed in the non-infringement opinion, the court will consider the opinion and may negate a finding of enhanced damages for willful infringement which can often be “treble damages” – tripling the amount of the actual damage.
4. Validity Search
Validity searches are relatively lesser frequently used and are carried out in specific scenarios. The goal of a validity search is to determine whether an identified/target patent is valid and enforceable. It is primarily requested by a potential defendant or a defendant in an actual patent infringement lawsuit that wishes to invalidate the patentee’s patent as a defense to patent infringement. In other cases, a validity search and opinion may be used prior to buying or licensing certain patents to determine the strength of those patents. A validity opinion also serves an important role in performing the due diligence prior to a merger or acquisition for purposes of evaluating an IP portfolio of a target company.