Introduction
Intellectual Property Rights (IPR) have undergone significant evolution in the recent past, and the increasing number of filings for different types of IP rights across the world show the increasing commitment of countries to foster innovation, creativity, and their desire to sustain it. In today’s rapidly evolving landscape of innovation and technology, securing intellectual property rights through patents has become paramount for businesses and inventors. However, navigating the complex realm of patent law demands a thorough understanding of existing inventions and their legal implications.
This is where patent searches play a pivotal role. A patent search in today’s times is not a procedure to be checked-off, but a strategic endeavor aimed at uncovering prior art, assessing patentability and mitigating infringement risks. In this article, we delve into the importance of patent searches, and what makes them important to those seeking to protect their innovations in an increasingly competitive market.
Types of patent searches
Simply put, there are different types of patent searches, depending upon the needs and objectives of individuals or businesses. The broadly categorised types of patent searches are as follows:
Patentability/ Novelty
A novelty search is utilised to identify existing patents, patent applications, scientific literature, other publicly available documents, pictures and videos relevant to the invention in respect of the proposed patent application intended to be filed. The search aims to determine whether the proposed invention is novel, i.e., it hasn’t been disclosed publicly prior to the filing date of such intended patent application. A novelty search is quite comprehensive in its scope and is conducted across not just patent databases but also scientific journals, search engines, etc.
Validity
A validity search is conducted to assess the validity of an existing patent. It aims to uncover prior art that may not have been considered during the examination of the patent and may invalidate one or more claims of the patent. Given the nature of the search, validity searches conventionally cover a broader range of prior art compared to novelty searches, to find any prior art that can challenge the validity of the claims of the patent. This type of search involves a thorough examination of prior art, including patents, patent applications, technical literature, and other relevant documents. Similarly, invalidity search with respect to a granted patent can be carried out to invalidate claims of the patent. Such invalidity searches are conducted to establish freedom to operate for a product or to respond to an infringement suit filed by the patentee of such patent.
Freedom to Operate
A freedom to operate (“FTO”) search aims to assess whether the commercialisation or use/launch of a product or technology would infringe on existing patents or intellectual property rights of others. The scope here is to identity patents that pose infringement risk to the commercialisation of the product. FTO searches involve analysis of patents, especially claims, to identify potentially relevant patents with respect to the features of the product. FTO search comprises analysis of granted patents in respective jurisdiction that have not expired or lapsed and have a filing date before the launch date of the product.
State of the Art
A state-of-the-art patent search is conducted to identify the latest developments, trends, and technical advancements within a particular technical field. The primary objective of a state-of-the-art patent search is to gain perspective on the existing patent overview, related to a specific technology area or domain. Such searches are favored by research institutions, technology companies, intellectual property firms and policymakers to stay abreast of the latest developments in their respective fields, to gain stock of what is trending and to consequently identify opportunities for research or business.
Patent Landscape
Patent landscape searches are conducted to identify and analyse patents related to a broad technology area, for example, ‘texturing of surfaces’. An in-depth analysis of such identified patents is carried out to draw plurality of insights such as evolution of technology, top players, top jurisdictions, emerging players, etc. One of the primary goals of conducting a patent landscape is to review the present research and development of a company and prepare/ modify the strategy for future business.
All the above-mentioned types of patent searches help prospective inventors, businesses and entrepreneurs in making informed decisions concerning patents. Conducting the appropriate type of patent search at the right stage is essential to leverage intellectual property assets and mitigate legal risks.
Searching strategies
Some aspects of patent searching are like searching for any kind of technical literature, such as articles, blogs, or papers in academic journals. However, a simple keyword-based search is just scratching the surface when it comes to patent searching. The basics of an efficient patent search include a dedicated mindset, proper strategy and a customised approach applied to the task. A patent search can be conducted using one or more of the paid and/or unpaid patent databases.
The trouble with simply relying on keywords for searching is that, first, they can be imprecise and there is a possibility of retrieving a lot of unwanted patents due to the said lack of precision. Second, synonyms are often used and therefore, a comprehensive list of synonyms for a given keyword are essential. However, due to the inclusion of synonyms, the number of retrieved patent documents for analysis also become high. That is where patent classifications come to the rescue. Patent classification is a fast track to finding relevant documents quickly, leveraging the intellectual effort of the examiners who classified patent documents in the first place. There are various classification schemes in place, such as the International Patent Classification System (IPC), administered by the World Intellectual Property Organization, the FI, F-term scheme, at the Japan Patent Office and the Cooperative Patent Classification (CPC) scheme implemented by the European Patent Office and the United States Patent and Trademark Office.
The aim, while using any patent classification scheme, is to find the most relevant classification term for your search concept. Use that term in your search, and if there are too many results then refine your search with additional keywords or other classification terms. The combination of keywords (and synonyms), along with classification terms is particularly powerful. However, all types of search terms can be combined using Boolean operators, according to the specific patent search database being used. As a best practice and to ensure that all relevant results, as far as reasonably possible, are captured, several combinations of keywords and classification terms are recommended to be used.
In addition to the above, multiple other strategies, such as Assignee-based search, Inventor-based search and Citation-based search, can also be utilised to close the patent searching task in an exhaustive manner.
Several Artificial Intelligence (“AI”) based patent search databases have also made their mark in the recent past. Such AI based search databases generally require the user to provide simple prompt (input) in the form of phrases, sentences and paragraphs to provide them with potentially relevant prior arts. However, like the application of AI in every other field, there are limitations associated with AI based search databases, compared to manual patent searching. It is believed that while AI based search databases may not replace manual patent searching described above, such tools can be deployed as a further layer of searching to support the traditional/manual patent searching.
For further information, please contact:
Swati Sharma, Partner, Cyril Amarchand Mangaldas
swati.sharma@cyrilshroff.com
