Intellectual Property is undoubtedly an important intangible asset for a company. IP asset strategies hold a prominent place in business. The development of IP, especially patents, requires a lot of time, effort, and money. This can be well understood from the time that is required for a patent to be granted. If a patent is granted for an invention, it ensures that no other person can claim your invention as their property. Even if someone ends up doing so by selling a copy of the patented invention or manufacturing a product that overlaps with the patent, they could be stopped from continuing these activities with the help of legal recourse, which can help prevent others from infringing the patent.

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A grant of a patent is a long process that entails multiple checks of novelty, non-obviousness, and industrial applicability. For this, it is very important to have a thorough check of prior art to understand the patentability of the invention. There are multiple types of patent searches that an inventor is expected to do before proceeding with the patent application.

1. Novelty or Patentability Search

Novelty searches are the most commonly requested searches. They are usually conducted to determine the likelihood of getting a patent. The main objective of carrying out such searches is to find whether the invention is patentable, but they do not account for whether the invention infringes any other patent in real life. Typically, these searches are requested by entities and individuals with new inventions to determine if their invention is patentable (novel and inventive/non-obvious) and worth the time and money to pursue.

Why Novelty search is important?

This search helps to better draft the claims. Searching helps to broaden the scope of the draft by having more effective knowledge. This search also helps the inventor to identify the strength of the patent, thereby, adding to the value of the patent. The conduct of the novelty search is more than a Google keyword search and it must be done by having a requisite experience in the subject matter.

2. Freedom to Operate Search

The goal of an FTO search is to determine whether a product infringes upon any of the patents found as part of the FTO search, whereas patents are territorial, and FTO searches are also carried out on a country-by-country basis. In case the product is found to be infringing, the product owner can redesign the product, abandon the commercialization of the proposed product, design around the patent, or approach the patent holder for possible licensing negotiations.

FTO searches are mainly focused on the claimed subject matter of the relevant in-force patents, rather than the disclosure/specification portion of the prior art. Due to this, FTO searches tend to be much more complicated, time-intensive, and significantly more expensive.

A Freedom to Operate (FTO) search helps determine whether it would be wise to commercialize a product given existing in-force patents. An FTO search helps evaluate whether the product owner is free to operate and commercialize a product without fear of getting sued for infringement. One can say it is a must to follow this process before the commercialization of a product to mitigate huge losses due to infringement.

A Freedom to Operate (FTO) search helps determine whether it would be wise to commercialize a product given existing in-force patents. An FTO search helps evaluate whether the product owner is free to operate and commercialize a product without fear of getting sued for infringement. One can say it is a must to follow the process before the commercialization of a product to mitigate huge losses due to infringement.

FTO searches are mainly focused on the claimed subject matter of the relevant in-force patents, rather than the disclosure/specification portion of the prior art. Due to this, FTO searches seem to be much more complicated, time-intensive, and significantly more expensive.

The goal of an FTO search is to determine whether a product infringes upon any of the patents found as part of the FTO search, wherein as Patents are territorial, FTO searches are also carried out on a country-by-country basis. In case the product is found to be infringing, the product owner can redesign the product, abandon the commercialization of the proposed product, design around the patent, or approach the patent holder for possible licensing negotiations.

Why it’s important to conduct FTO search?

This is more of the due diligence process to determine whether there is any pending patent application or a granted patent. This helps in providing a risk assessment for analyzing the future of the product. If there is any patent already in the market, the applicant can also take the option of licensing/cross-licensing. Also, knowing the registered patent can help the applicant to design around the patent and introduce new features.

3. Non-infringement Opinion

A non-infringement opinion is directed to a specific patent or a set of patents that have been previously identified. When a new product, process, or technology is created but is known to be similar to an existing patented product/process/technology, a non-infringement opinion should be obtained. A non-infringement opinion has similar steps involved in the FTO search, except that no search is conducted because the patent at issue has already been identified. Also, just as with an FTO opinion, deconstruction of independent claims of the relevant patents is done along with an element-by-element analysis and comparison with the proposed invention.

A significant advantage of conducting FTO and non-infringement opinions in advance of any allegation of infringement or commencement of a lawsuit is that, if the search and opinion are performed by a reputable licensed patent attorney, it can serve an exculpatory purpose if the inventor is sued for patent infringement. For instance, if a non-infringement opinion is obtained by an inventor and later the inventor is sued for patent infringement based on the same patent that was analyzed in the non-infringement opinion, the court will consider the opinion and may negate a finding of enhanced damages for willful infringement, which can often be “treble damages” tripling the amount of actual damages.

4. Validity Search

Validity searches are relatively less frequently used and are carried out in specific scenarios. The goal of a validity search is to determine whether an identified/target patent is valid and enforceable. It is primarily requested by a potential defendant or a defendant in an actual patent infringement lawsuit who wishes to invalidate the patentee’s patent as a defense to patent infringement. In other cases, a validity search and opinion may be used before buying or licensing certain patents to determine the strength of those patents. A validity opinion also serves an important role in performing due diligence before a merger or acquisition for the purpose of evaluating an IP portfolio of a target company.

Why validity search is important?

In litigation, the defendant can use the result of a patent invalidity search to try and overthrow the patent in court or by filing a petition for IPR. The invalidity search can be beneficial when a notice or a complaint has been received from the patent owner.

Given that these are highly specialized searches, they are best left to experts such as attorneys or patent search firms, as these searches are time-consuming and require expertise. The experienced professionals at GPF are there to guide clients through the process associated with patent searches. The team at GPF works with clients to provide and implement filing strategies based on the client’s demands and ensures timely execution.

Author: Saransh Chaturvedi an associate at Global Patent Filing,  in case of any queries please contact/write back us at support@globalpatentfiling.com.