2018-02-26
When you have an invention, figuring out how to protect it is often on your mind. Patenting your invention is generally the best way to do this. But, is your invention patentable? This question is generally followed by other concerns like whether a patent already exists and whether the patent holder will sue you.
There are millions of patents, with most patent holders claiming rights to their respective patents in various parts of the globe. It isn’t possible to be aware of each and every patent. This is one of the reasons why patent lawyers and agents suggest patent searches. Plus, it is often difficult to clearly understand a patent’s scope of coverage. While the questions listed above are natural and seem related, their solution demands different approaches. The first question on patentability relates to whether you will be able to obtain a patent for your invention. The other question relates to a possible situation that may occur after obtaining a patent – will you have the freedom to operate or use your invention anywhere? When it comes to patents, you will be required to conduct different levels of searches for different reasons.
This article will acquaint you with the concept of patentability searches and freedom to operate searches and will also point out the potential differences:
Patentability Search
Patentability searches typically focuses on the major aspects of an invention that qualifies them for patent registration – novelty and non-obviousness. In order to be patentable, your invention should be novel or new. It cannot have been described anywhere in the world. Your scope of the search is not limited to registered patents, but any known invention. To save time, people conduct online searches. They search patent databases and do a quick Google search using related keywords. Another condition for patentability is non-obviousness. While novelty focuses on finding all aspects of the invention in a single application, the obviousness test determines if the invention is obvious to people skilled in the art. It tests for combinations of different aspects of inventions. While it demands some cost and effort, the search should be a considered as a part of your patent strategy in order to prevent issues in the future.
Freedom to Operate Search
When you infringe an existing patent, the patent holder has the right to file a lawsuit and may also demand compensation. The freedom to operate search is conducted to assess whether your invention may infringe an existing patent. It helps identify any potential infringements that may occur in relation to your inventions or products.
A freedom to operate search should not be confused with the novelty search. The scope of the novelty search is wide. But, the freedom to operate search is narrow in its scope. To conduct this kind of search, you first need to limit your scope to the jurisdiction, because the scope of patent rights, in general, is national. For instance, if you plan to sell your product in the USA, then you’ll have to conduct a different search for the country. Furthermore, evaluation of your search results should be focused on the patent documents. Patents can be enforced only on the basis of the claims included. Your scope of analysis should be limited to the claims of the patents in question. Although the scope of the search is narrow here, it should be detailed. Unlike the patentability search, you need to evaluate the patent claims in detail to determine the potential for infringement. This type of search is also costlier and requires a considerable amount of effort. It is recommended that this type of search be completed only when there is a possibility of the existence of potential competition.
If you want to know more or need help with a patent search, consult patent agents or lawyers at Prowse Chowne LLP.
