Different purposes for which searches are done
. . . seek, and ye shall find . . .
Before we begin:
This article article in three parts is aimed at those who are not patent professionals – say, inventors and those who make decisions that has anything to with patents. Hence, almost all patent related terms have been defined for a general understanding and a patent professional may find them incomplete or even inaccurate. Many of the concepts have been presented by eliminating details and nuances. For example, the topic of “Person of ordinary skill in the art” may require an article larger than the present one or even a small (hopefully) book. This three article series is written to make those connected with patents familiar with the subject of searching. Often, the pivotal role played by the search function, and consequently searchers, are not appreciated enough. This is an attempt to set the matter straight, at least a little.
Search is an important function in the world of patents. In certain situations even vitally important. That being the case, what IS the search function? Let us take a look at that function under various situations connected with patents. Before doing that, it is good to review what a patent is and list some facts about patents that have a bearing on the search function.
- A patent is a type of intellectual property right (IPR) that protects an invention.
- It gives an inventor, a group of inventors, or an entity the right to stop others from practicing what is protected by a patent, without the patentee’s permission.
a. The duration of this right is twenty years
- The protected invention may be a product, a part of a product, a device or a system, a method, a composition, structure, a process and so on.
- For a patent to be granted on an invention, the invention must be new at the time of submitting the application for the patent. (Novelty)
- The invention must not be obvious to someone who does not have an “inventive spark” but is knowledgeable in the field of technology to which the patent belongs. Such a person is referred to as a person of ordinary skill in the art. It is an imaginary person created for legal purposes. (Non-obviousness/technical advance/inventive step)
- The invention must be capable of industrial application.
- An invention may be thought of as a technical solution to a technical problem in the state of the art.
- Given the patent document that describes an invention, the person mentioned in 5 above should be able to reproduce the invention.
- The exact boundary of what the patent protects are defined in the part of the patent called claims.
With these in background, let us see where the search function fits in. Let us take different situations in which search plays a role.
A) Before research and development work is started
In many research and development organisations, before a research project is approved, the team that intends to work on the project needs to seek approval and funding. The team that approves projects expects a report on patent literature survey along with the proposal. This is similar to literature surveys that are common in scientific research. The reasons are:
a) Avoiding reinventing the wheel: That is, a technology may already be available or a solution may already have been found for the problem that the project intends to solve. If it is not patented or if the patent has expired (as defined in 2a) the team could use the technology for free.
b) Avoiding wastage of effort. After the project is concluded, if the team finds that the solution has already been patented and hence they cannot use it, all the effort, time, and money would have been wasted.
There are no limits on the databases or sources for the search and all solutions from all sources are considered.
We may call this type of search state of the art search
B) Search to find a solution to a problem.
This type of search is done, for instance, when development work is being done and the team faces a technical problem in an area which is not a part of its expertise and a solution is needed. Like in the state of the art search, there are no limits on the databases or sources for this search and all solutions are welcome. However, this is a search that is not used much, unfortunately. The reason may be that the benefits of patent literature are not realised widely. For the purposes of this article this type of search will be referred to as the solution search.
C) Before applying for a patent
Even after the search in ‘A’ above, it may be a good idea to do a search before starting the drafting of a patent application. The reasons are as follows. Firstly, since the project was started and the date of application for a patent based on it happens much later, others may have been working on solving the same or similar problem and may have already applied for a patent or published the results of their work. Secondly, no search can be considered 100 percent effective. Therefore, the patent application made by the team will not be granted.
This type of search may be referred to as a novelty search or a patentability search, for obvious reasons.
D) Before starting work towards launching a new product or before launching a product
Assume that a company has a product idea and wants to pursue it. It may be designed and developed using known technologies or inventing some solutions on the way. But, before starting the work or even launching the product the company may like to be assured that after making investments for launching the product, a patentee will not accuse them of infringing one or more patents of the patentee. So, a patent search is done to get some confidence that such a thing is unlikely to happen. The aim is to find out if there are any patents that may be used against the company.
This type of type of search is often called a freedom to operate (FTO) search. But a better name for it would be a risk estimation, risk assessment, or risk analysis search. As mentioned earlier, no search can be considered 100 percent effective. Hence, even after doing a risk assessment search, there still exists the risk that the company is unknowingly infringing a patent that was not found in the risk assessment search.
E) When accused by a patent holder that one is infringing a patent
Assume that a patentee accuses a company infringing the patentee’s patent. By analyzing the patent, the company may even agree that it had in fact been infringing a patent, albeit unknowingly. In such a situation, a search may be carried out to retrieve all the literature that existed before the date of application of the concerned patent that would make the patent invalid. The purpose of the search is to see if the invention protected by the patent was in fact novel on the date of application. Even if the patent is found valid, by citing one or more prior art documents found in the search, the value of the patent may be questioned. This may help in reducing the license fee demanded by the patentee during negotiations.
This type of search is called an invalidity search because its aim is to prove that the patent in question is invalid
F) Before accusing someone of infringing your patent.
Assume that a patentee wants to accuse someone, a competitor for example, of infringing a patent of the patentee. Before rushing to accuse the infringer, it is prudent to conduct a search to ensure that the patent is indeed valid. This helps in avoiding unnecessary legal costs in case the competitor finds a prior art document that invalidates your patent.
This type of search is called a validity search because the aim is to confirm that the patent is valid.
In reality, there is no difference between ‘E’ and ‘F’. They could both be called validity search. However, for the sake of understanding, the two are given different names here.
One must note that the types of searches described above are not in water tight compartments. For example, assume that you do a risk assessment search as in ‘C’. Assume that you find a patent that is blocking you from launching your product. The emphasis then shifts and you seamlessly move into an invalidity search process as in ‘D’ on the patent found to be blocking you.
It must be amply clear by now that one cannot assume that a patent is valid. This is one of the principles in the patent field that stems from the fact that no search is 100 percent effective as described before but bears repetition here. Even though the biblical quote at the beginning of this article is reassuring, when applied to the patent related searches, unfortunately, it is not so. However, it is the right attitude with which one should start every search. If you start a search with the thought that the kind of document you are looking for does not exist “out there”, it may become a self-fulfilling prophecy in that even if the document is “out there” you may not find it.
At this point an important question arises. Even though the situation under which each type of search is done is different or the aims of each type of search done are different, are the practical features of the search the same or are they different? The simple answer is they are different.
Article by J L Anil Kumar, Senior Consultant, LexOrbis
1st published on Lexology.