PATENT SEARCHING: WHEN, HOW AND WHY?
Dominique Pomerleau & Frédéric Venne
ROBIC, LLP
Metallurgical Engineering, P. Engineer, Engineering Physics, Patent Agents
In most industries that involve the manufacture and sale of products and/or research and development (R&D), patent searches should be a priority. No matter what technology field you operate in, you want to maximize and protect your R&D efforts, and you want to avoid any infringement of patents held by one of your competitors.
However, before seeking the services of a patent agent or a specialized search firm, you first need to be able to identify your patent needs. From a practical standpoint, you should be able to pinpoint a few questions you would like to have answered by the search. Those questions are naturally guided by other considerations, such as the status of your project, and by practical concerns such as your financial resources. For example, your needs will be different if you are just starting a project or if you are at the design or commercialization stage of the product or process. You may also wish to conduct a search in response to an allegation of infringement received from a competitor. The scope and complexity of the search also depend on the budget allocated to it.
In other words, there are different “types” of searches, each of which addresses a particular need. The main types of searches that can be performed in patent databases are patentability, freedom to operate, validity/invalidity, state of the art, and landscape.
Patentability search and analysis
This type of search is generally recommended to verify the uniqueness of an innovation and therefore its potential patentability. To qualify for patent protection, the invention, as claimed, must meet three fundamental conditions: novelty, non-obviousness and utility. It is generally recommended that the search be carried out at the initial stages of the process in order to protect patentability.
The results of a patentability search are used to assess the novelty and inventive character of the invention at the time the search is performed. It is often specified that this search is preliminary because patent applications that have been filed but not yet published could be relevant to the patentability of the invention. No matter what databases are used, a search will not identify unpublished patent applications and industrial designs that have not yet been registered. Keep in mind that patent applications are generally published 18 months after their priority date, whereas industrial designs are published upon registration. Consequently, a search update may be carried out close to the deadline for filing a regular patent application.
The patentability search is performed in all patent-type publications available worldwide at the time of the search in the database(s) consulted, in non-patent-type publications[1] and in information available from standard Internet search engines. This is because the assessment of patentability is not limited to prior art publications and uses in a specific jurisdiction; it must be global.
The results of a patentability search can also be used to identify the innovative point(s) of the invention, which can shorten the examination period and reduce the associated costs. Analyzing of the results of the search can also improve the quality of the patent application by identifying the elements of innovation relative to existing documents at the drafting stage.
Freedom-to-operate search and analysis
The concepts of freedom to operate (commonly referred to as FTO) and infringement are interrelated. An infringement analysis is used to assess whether the product or process that a company wishes to manufacture, use and/or sell infringes a third party’s patent or whether the third party’s product or process infringes one of our patents.
An FTO analysis determines whether the product or process that a company wishes to manufacture, use and/or sell in one or more jurisdictions infringes one or more patents in force in that jurisdiction or those jurisdictions. The analysis generally includes pending and published patent applications for which a patent may eventually be granted (including published international patent applications (Patent Cooperation Treaty) that may enter the national/regional phase in the jurisdiction(s) surveyed).
Thus, an FTO search is performed in one or more identified jurisdictions with the goal of verifying the freedom to use and/or sell one’s product or process when it is launched or put into service in that jurisdiction or those jurisdictions.
It is advisable to be aware of possible infringement risks right from the product/process development stage in order to save time and capital. After patents that could be an FTO problem are identified, various approaches are possible: circumvent the troublesome patent(s), enter into a licensing agreement with the third-party patent holder, or attempt to invalidate the troublesome patent(s). You can also establish a monitoring procedure for potentially problematic patent applications to provide information about any changes made to the claims during the examination procedure and the scope of the prospective patent.
Validity/invalidity search and analysis
To invalidate the troublesome patent(s), you need to identify documents (patent publications, non-patent publications or prior art). An invalidity/validity search is an exhaustive, time-limited prior art search conducted on the claims of a patent to verify its validity or to invalidate it by discovering relevant documents that may have been filed before its earliest priority date.
This type of search is performed to challenge a patent using pre-grant or post-grant opposition options, or as a defence in a patent infringement lawsuit. An invalidity search also establishes the strengths and weaknesses of a patent’s claims with a view to fair licensing and acquisition negotiations.
State of the Art search
A State of the Art (SOA) patent search is a comprehensive search that summarizes the existing state of the art and profiles the current state of affairs in a particular technological field or subfield. This type of search is used to assess a company’s ongoing R&D activities relative to the technology sector as a whole and can help streamline the decision-making process regarding the advancement of commercial R&D.
SOA searches are mainly useful in cases where (a) you are looking to enter a new field or develop a new technology and/or (b) you need to refine or otherwise change the direction of your research or business. In both of these non-limiting scenarios, an SOA search can save a lot of time and money, as it provides an overview of prior work in the technology segment in question. Knowing how and why certain technologies have evolved and what problems and solutions have been discovered allows for more efficient allocation of human and financial resources and minimizes unprofitable activities.
Landscape search and analysis
The terms landscape and SOA are sometimes used interchangeably. This is because both types of searches help guide strategy and give a company a competitive advantage over other market players. Both have a broad scope that includes a thorough search and review of all patent literature – and, in some cases, non-patent literature – in the targeted technology segment.
A landscape study, also known as patent mapping, is essentially a more detailed analysis of an SOA search and contains visual representations of trends in the targeted technology segment as well. It therefore includes one or more graphical representations of a set of patents in a particular technology space.
The purpose, scope and method of mapping vary depending on the business goal. However, the primary objectives of landscape analysis are to identify the patents of interest and the key players in a given segment, verify their characteristics, analyze the relationships between them, and use this information to guide key business decisions.
In other words, a landscape analysis is an advanced monitoring tool that enables business owners, investors and financiers to organize and extract value from patent data and gain deeper insight into factors such as the following:
- Technology areas that are underexploited or unexploited;
- Technologies for potential R&D;
- Key players and new market entrants;
- R&D direction and strength relative to peers;
- The relationships between the key players;
- The main strategies implemented for the protection of inventions;
- Emerging opportunities for licensing, acquisitions and joint ventures;
- Possible areas of infringement; and
- Patents to be dropped.
Conclusion
The purpose of this article was to outline the different types of searches that can be performed in the patent world, each of which will address specific questions arising from your business needs.
The examples presented in this article are only a small selection of the analytical possibilities available, and there are as many ways to gather information about your competition as there are questions you have about them.
If you need more information or have questions about mapping a technology area, please contact Dominique Pomerleau and Frédéric Venne.
[1] The term “patent publications” includes patents, published patent applications, and registered industrial designs. The term “non-patent publications” includes any other published material: advertising pamphlet, user manual, scientific article, book excerpt, etc.