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More than a quarter of a million PCT (international) patent applications were filed just in 2020, adding to the over 120 million documents in the EPO’s global patent database. Most of them are unlikely to be of interest to you or your business, so how do you find the ones you care about?
Patent searching using specialist databases and skilled searchers can give you the intelligence you need to make business decisions.
Pre-application novelty searching
For a patent application to be successful, the invention must be new and non-obvious. As part of the application process patent examiners around the world will search for prior art, but conducting a search before a patent application is filed can help to manage risk, better focus the patent specification, and improve the chances of success.
In terms of risk management, the thinking goes that if you are going to find out that your invention is not new at all, then it is better to find out as early as possible and not waste costs on a patent application which is doomed to fail.
Having said that, in our experience it is relatively rare to find prior art which is exactly the same as the invention presented to us. Perhaps it depends on the technical context – an inventor working in a specialist industrial area may be one among a small number of people in the world who are likely to even be thinking about a particular problem, whereas almost anyone could potentially come up with an idea for a toy or simple household gadget.
In any case, it is equally uncommon for us to conduct a patent search and find nothing of interest at all. Usually there are documents which are relevant – they might disclose part of the invention, or maybe a slightly different approach to tackling the same problem. Knowing about this sort of prior art at the outset allows us to tailor the patent specification and claims to focus on what is really new. This gives you the best chance of obtaining the best, broadest, protection. Dealing with the prior art early on is also likely to reduce the costs of prosecuting the patent application to grant.
Infringement, or “freedom to operate” searching
Whether you have your own patent or not, others may have patent rights which could prevent you from lawfully selling a product. “Freedom to operate” searching, as the name suggests, is designed to provide some assurance (though never a complete guarantee), that there are no patents in force which would block your plans.
Freedom to operate searching is a highly tailored, specialist service. The approach taken, and indeed whether searching is a particularly useful tool at all, is heavily dependent on the industry context.
Anyone facing a potential claim of patent infringement is likely to want to do their best to attack the validity of the patent being asserted. Although a patent in force in the UK will have been searched and examined by an EPO or UKIPO examiner, a potential defendant in a patent infringement claim is going to be motivated to put more resources into trying to “knock the patent out”.
In one sense an invalidity search is looking for the same sort of thing as a pre-application novelty search – anything which will show the invention is not new or is obvious. However, the starting point on an invalidity case is a granted patent with a particular set of claims, and the search can also be focused with the alleged infringement in mind, perhaps to support a “squeeze” argument.
In the UK – and to a greater or lesser extent in other countries as well – the concept of “common general knowledge” is of great importance to an inventive step attack. It is therefore particularly important for an invalidity search to cover non-patent literature. Good sources of this “basic knowledge” will depend on the industry, but often include textbooks and similar publications.
Effective invalidity searching often requires an iterative approach, finding close prior art and then re-thinking the search strategy based on the prior art found, to try to “fill the gaps”.
Competitor monitoring and technology tracking
What patents are being filed by your competitors? What patents are being filed by your customers? What sort of filing activity is going on in technical areas your business is interested in?
Knowing the answers to these questions can help to inform business strategy in a much more general sense than simply in terms of IP risk management. Patent applications are published within 18 months of filing, often well before products have been officially announced. So monitoring patent filings can give you advance notice of what might be coming. Looking at technology areas in a general sense can help you get a sense of what R&D departments in your industry really care about enough to spend money on. Not always does this match the PR rhetoric. Monitoring patent applications gives you a window into what is really going on.
How is searching done?
Patent searching is carried out by experienced searchers using specialist databases. Some of the search strategies used will be of no surprise to anyone who has used Google, but patent searchers are also familiar with the classification keys used to organise patent documents, and the language which is used in patent specifications. Specialist databases and tools, and nowadays all of them include various AI technologies, allow very powerful searching to be carried out by those who know how to use them.
There is nothing to stop you having a go yourself though. Although lacking some of the more powerful features found in paid-for products, Espacenet is a very good free online database. We also publish a guide to how to do your own free patent search.
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