Patent searches come in all shapes and sizes, and each search is designed with a particular goal in mind. Generally speaking, your patent searches can be categorized as either patentability searches, freedom-to-operate searches, or invalidity searches. Timing and circumstances dictate which type of search is most appropriate for your situation, but while each type of patent search presents its unique challenges, it is often the invalidity search that requires the most effort from a patent practitioner.
1) The Patentability Search
A patentability search (also known as a "novelty search") is the most common patent search, and it is often the most practical and affordable search for inventors and patent practitioners to consider. Conducted before filing a patent application, the task at hand for a patent practitioner performing a patentability search is to determine whether a particular concept is unique enough to be patented. This requires finding references from around the world - publications and public information in a variety of formats (collectively known as “prior art”) - and determining whether the concept is fully described in any single reference or combination of reference.
2) The Freedom-to-Operate Search
Before making, using, or selling a product or service, a freedom-to-operate search (also known as an “FTO” or a “clearance search”) is completed to determine whether operations infringe upon any existing patent rights. As a result, an FTO is often limited to only valid or pending patent documents in a specific geographic region. After a search reveals patents that are possibly infringed through the making, use, or sale of the product or services at issue, the focus shifts to the language of the patent claims to determine whether infringement will actually occur. If your product or service omits at least one of the elements in each of a patent’s independent claims, it is not infringing on the patent and you are clear to operate.
3) The Invalidity Search
Unlike a patentability search or an FTO search, an invalidity search arises after a patent has been granted. In some instances, the goal of an invalidity search is to invalidate an already-granted patent. In other instances where the search is more appropriately termed a “validity search,” the objective is to prove that a patent was appropriately granted and remains valid.
Invalidity and validity searches typically arise during major monetization or enforcement events. For example, before acquiring rights to a patent, a company or individual may want to run a validity search as part of their due diligence to ensure the underlying patent is valid. Alternatively, in the event that a company or individual is sued for patent infringement, it is common for the company or individual to claim as a defense that the allegedly-infringed patent is invalid. In this case, the defendant will hire a patent practitioner to run an invalidity search in an attempt to invalidate the patent at issue.
An invalidity search is similar to a patentability search in that a patent practitioner conducting an invalidity search must consider all forms of prior art that existed prior to the grant of the patent. However, because an invalidity search arises after a patent has been considered by a patent examiner, invalidity searches require finding prior art references that were missed, or not considered, by the patent examiner. Assuming the patent applicant had a patentability search conducted before filing and that the patent examiner also conducted research before making a patentability determination, a patent practitioner trying to invalidate a patent could be facing quite a challenge.
LexisNexis TotalPatent One® patent search tools are used by patent professionals for the most thorough and efficient search results. TotalPatent One® allows researchers to access a database of over 100,000,000 patent documents from over 100 patent authorities. The intuitive TotalPatent One user interface and document filters ensure a thorough, on-point invalidity search faster than ever.