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What Kind of Patent Search Do You Need?

Josh Conley \ August 14, 2018

Conducting intellectual property searches are crucial if you are an inventor, investor, entrepreneur, or a seasoned vet looking to have an idea protected. Here is a list of common searches that should be conducted as your business develops.

A patentability search

If your invention is not found on the first two pages of Google, that doesn’t mean someone hasn’t already created or applied for the same or similar thing.

Before having an application drafted, it is recommended to conduct a patentability search. A patentability search is a detailed examination of all public disclosures about the patent application to determine what, if any, features of the invention are likely to be patentable.

The search looks at every aspect of the invention and compares it to previous public disclosures — this encompasses any public disclosure of the invention anywhere in the world. This includes anything from a magazine, a website, an adequately attended presentation, a demonstration, a journal article, or a video, i.e., YouTube or news story.

If your invention already exists in another invention, then it is considered to defeat a requirement of patentability — novelty. When the combination of inventions are viewed together — disclosing the features of your invention — it is considered an obvious advancement to another invented product. The Patent Office will reject your application on the basis that a mixture of references make the invention "obvious." 

A good IP attorney can assess the landscape of your invention and advise you on how to move forward, if at all. 

Freedom to operate search

A freedom to operate search is a search that looks over published patents and pending patent applications to identify those that present a potential threat. A good attorney can also advise on how likely a pending application is to present a problem down the road. 

This search is beneficial in two circumstances: when an inventor (or an entrepreneur) is not worried about securing patent rights and wants to start production; or when a patent owner or applicant wants to know the limits of using their patent rights.

In the first scenario, they want to make sure that they will be able to market and sell their particular product without the risk of infringing. To go in this direction, the inventor wants to avoid getting sued or wants to identify other inventions they will need to design around to prevent infringement or to secure a patent.

In the second scenario, the patent owner needs to know how much of the market they control and what they need to be aware of in capitalizing their invention.

Validity search

The purpose of a validity search is similar to a patentability search, but it is typically used in litigation. The goal of a validity search is to find reference that will render a patent invalid. Typically, the focus is on whether the defendant can invalidate the patent by showing there is a fault in the grant of the patent.

An intellectual property attorney will do these often tricky searches for you. Their expertise will give you the most accurate results possible. With that, you will be able to have proper guidance on whether it is worth spending the time and money to patent, develop, distribute, defend, or litigate.

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