Patent searching can be a vital element of any intellectual property strategy, allowing prospective patent applicants to focus on prior work by businesses known to be active in a particular field, as well as looking at patents owned by specific competitors that may be likely to sue for infringement.
To be valid, patents must cover inventions that are sufficiently novel and not obvious, and also have an “inventive step” in Europe. A business looking to secure substantial investment in a new product should ask itself the following questions:
- Can a patent be secured that would protect the product in the marketplace because the invention embodied in the product is new and not obvious?
- If the product is brought to market, can a third party claim patent infringement?
Answers to these questions can be obtained through two kinds of patent searches:
Patent Search – Prior Art or Patentability Search
A prior art or patentability search is the most common form of patent search as it may indicate whether an innovation could be novel and therefore patentable. It is used to see whether an innovation or a refinement of an innovation has been patented before and is therefore not new. This kind of search is also serves to reveal commercially useful information about third party patents and products that your business may be unaware of.
Patent Search – Freedom to Operate Search
A freedom to operate search is a far more in-depth search as it looks to guard against infringement of third party patents. It is used to look at patents owned by specific competitors that may be likely to sue for patent infringement. The scope of patents is always open to interpretation so their boundaries may often by unclear. For that reason, it is a broader, more time-consuming and therefore more expensive type of search. However, it can add value in terms of looking at the overall patent landscape where there are a number of competitors in a specific field.
For further information or advice on patent searching and developing an intellectual property strategy, contact us.
Tidman Legal is a firm of specialist intellectual property lawyers based in Edinburgh.