Written by: Christopher Palmisano, bluesalve Partners
One often-misunderstood but truly fundamental component of a successful patent prosecution practice is patent searching. Not all patent searches are equal: a patentability search, for example, is inherently different from a freedom-to-operate search (sometimes called patent clearance, or a freedom-to-practice search). One search looks broadly at prior art to determine whether a new idea is novel, while the other looks specifically for patent claims that correspond to whatever it is that a client wishes to make, use, or sell. The different searches require different approaches, different levels of analysis, and yield different results.
Patentability Searching - Is It Patentable?
A patentability search is used to determine whether or not something is likely to be patentable. It involves reviewing the scope and content of prior art, and helping the client determine whether they are likely to succeed in obtaining a patent with the scope of protection--and therefore business value--that they want. Results from a patentability search help determine whether the same or similar invention already exists elsewhere in the prior art.
Prior art, by the way, includes anything and everything that that is publicly known before today. It can include patent documents, academic papers, tradeshow presentations, marketing materials, YouTube videos, social media posts, newspaper and magazine articles, ... the list goes on. In other words, prior art is just about anything, in any language, that a patent examiner can find to support a case against a patent application. Since it is not possible for a searcher to consider everything in the prior art, a skilled searcher will know (or will find out) where they are most likely to find information that is most relevant to patentability.
Isn't Finding Prior Art the Patent Office's Job?
Yes, the Patent Office will do its own search. However, finding good prior art early can lead to more efficient (i.e., inexpensive) preparation and prosecution of a new patent application. For instance, known prior art can be used to right-size the claims of a new application, and to focus the claims and application on the true point of novelty of your innovation. Getting to the point of novelty quickly makes for more compact and inexpensive prosecution, helps avoid expensive rabbit holes of ancillary issues, and provides a cleaner file history.
Ultimately, a good patentability search, performed before filing a patent application, helps determine where an invention sits relative to edges of the prior art. From there, the applicant is better equipped to decide whether the potential reward of a patent is great enough to justify the expense of filing a patent application in the first place.
Freedom-To-Operate Searching - Is It Covered By Patent Rights Owned By Others?
The purpose of a freedom-to-operate (FTO) search is more targeted than a patentability search. Instead of looking at the entire body of prior art to determine whether something already exists, an FTO search is used to determine whether or not a specific thing or process is covered by patent rights owned by others. The first step in an FTO search is to clearly and concisely define the target, or the thing or process that is to be cleared.
The next step is to determine the breadth of the FTO search. The search generally concerns claims of issued, non-expired patents in jurisdictions of interest to the client. Therefore, the search can be geographically limited. For instance, if a client is concerned with clearance in the United States only, then the FTO search can be limited to United States patents. In some cases, the search can be further limited to particular patent owners (e.g., based on which competitors are most likely to instigate litigation), or can be limited to patent documents that include particular words or phrases that describe the clearance target. There are countless ways to balance the competing interests of performing a thorough search and obtaining a practical number of patent documents for analysis. Your attorney should be able to work with you to determine the right scope for your budget and risk tolerance.
After a pool of patents is assembled from the search results, the deeper analysis begins. The claims from each patent are examined for correspondence with the clearance target. In this phase of the analysis, the focus is less on an overall teaching of any particular document, and instead is on determining the rights defined by the claims. A patent's specification or drawings can be used to help interpret the claims; however, these are not the same as--and not necessarily commensurate in scope with--the claims.
To complicate matters, the scope of the claims can be influenced by what happened during the patent application and examination process. In other words, reading a patent cover-to-cover is not enough to understand what rights are actually owned by the patent holder. Those rights can only be determined after review and analysis of the claims in light of the broader file history of the patent of interest.
As you can start to see, an effective FTO search and analysis is more than just a search for relevant documents. It requires concise definition of the thing or process to be cleared, a search strategy that hones in quickly on the highest risk patents, and a deep dive into the details of the patents that were turned up by the search. A thorough FTO search and analysis can be a time consuming exercise, but it pales in comparison to the time and expense of patent litigation.
Where Do I Go From Here?
First, clarify the question you are trying to answer. Are you trying to determine whether to file a new patent application? Are you concerned with your freedom to commercialize a new product? Not sure which question to ask, or whether to ask them in the first place?
Get in touch for a no-cost discussion to see if bluesalve can help you achieve your IP goals.