Different Types of Patent Searches – an Overview
People are surprised to learn that multiple types of patent searches can be conducted, and the search selected will depend upon the search’s rationale. This article provides an overview of the different types of patent searches that can be done.
Novelty or Patentability Search
Novelty searches are conducted to determine the likelihood of getting a patent through the United States Patent and Trademark Office (USPTO). This is a vitally important search because you do not want to waste your time and resources on filing a patent application for something that is already subject to an existing patent.
Another benefit associated with this type of search is that it can often yield valuable information to the inventors, such as competitors in the same space.
You may be asking yourself, “what exactly are the steps that need to be taken to conduct a novelty search?” Well, the first step is for the inventor to clearly identify the invention and list out all the elements and key aspects that they believe are novel. Second, a comprehensive search needs to be conducted through the USPTO database for patents and publications, Google, and other databases to assess whether any of the search results involve the same elements as those described by the inventor.
Freedom to Operate Search
A Freedom to Operate (FTO) search is done to help determine whether it would be prudent to commercialize the product in view of existing patents. In other words, the FTO search determines if the inventor is free to operate and commercialize the invention without the fear of getting sued for infringement. The focus of an FTO search and opinion is on the claim portion of the existing, in-force patents, rather than the disclosure portion of the prior art as in a novelty search. As a result, FTO searches tend to be more complex and time-intensive.
The steps involved to conduct an FTO search are similar to those taken during a novelty search. Just like a novelty search, the inventor must clearly identify the invention and list out all the elements and key aspects that they believe are novel. A searcher will conduct a comprehensive search focusing only on in-force patents and published patent applications in the relevant jurisdiction. After that, your patent attorney must then review and analyze the search results, specifically by scrutinizing the independent claims of the relevant patents and researching the prosecution history of those patents. The patent attorney will then assess if there is literal infringement or equivalent infringement for the elements described by the inventor.
The objective of an FTO search is to assess whether the proposed invention infringes upon any patents found in the FTO search. If they do, the inventor can decide whether they want to stop any further efforts related to the commercialization of the proposed invention, engage in a redesign, or approach the patent holder for possible licensing negotiations.
Validity Search
Validity searches are usually conducted when there is a request by a potential defendant or a defendant in an actual patent infringement lawsuit seeking to invalidate the patentee’s patent as a defense to patent infringement. The objective is to determine whether the identified patent is valid or enforceable.
In other instances, a validity search and opinion may be used prior to purchasing or licensing certain patents to determine the strength of those patents.
Have Questions? Contact an Experienced and Reputable Patent Attorney in Los Angeles Today
If you have an invention and want to obtain a patent, retaining the services of a reputable and highly experienced patent lawyer, such as the professionals at Omni Legal Group, is imperative for a successful outcome. Whether you are in need of, or have, a provisional patent, non-provisional patent, design patent, utility patent, or plant patent application, Omni Legal Group is here to help. Omni Legal Group is a premier Patent, Trademark, and Copyright law firm located in Los Angeles. For further information or to schedule a consultation please contact Omni Legal Group at 855.433.2226 or visit www.OmniLegalGroup.com to learn more.