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The protection and commercialization of an idea can be a stressful and risky endeavor. In plain terms, two main concerns encapsulate the bulk of the uncertainties when it comes to commercializing an invention:
A patentability search primarily addresses the first concern while a freedom-to-operate search addresses the second. Both types of searches can potentially help you as the inventor to mitigate some of the risks ahead of time and formulate strategies accordingly.
What is a Patentability Search?
A patentability search, also known as a novelty search or a prior art search, is a search of all publicly available material, which includes both patent and non-patent literature from around the world, to assess if an invention has already been disclosed to the public in any form. Relevant public information could raise issues in the patentability of an invention.
Generally, there is no requirement on the medium or format of the information that could potentially turn up during a search. Relevant texts, drawings, images, or videos could all present issues in patentability. Although the relevant disclosure does need to have some degree of detail beyond a single sentence of tangential commentary, a few sentences could suffice as long as the information can enable a person skilled in the relevant field to replicate your invention. Additionally, separate documents that each contain a portion of the invention could also defeat its patentability by collectively rendering the invention obvious.
A patentability opinion could then be formulated by the patent agent based on their analysis of the results of the patentability search. For more on patent novelty and obviousness, check out our previous article on patentability.
Even though a patentability search is completely optional in the patent application process, conducting a search can be a cost-effective way of mitigating risk ahead of committing significant resources to an actual patent filing. There are a few key facts to take into consideration when deciding whether to conduct a search:
Another potential drawback to conducting a patentability search is that U.S. law requires you to file "all information known to that individual to be material to patentability" with the United States Patent and Trademark Office (USPTO). Any relevant result from the patentability search would have to be made available to the USPTO, meaning the search results could indirectly assist the patent office with finding prior art and potentially hinder your chances of obtaining a granted patent.
Nonetheless, it is better to unveil potential shortcomings in a patent application earlier rather than later. This is especially the case for startups and small entities, where a high degree of flexibility enables quick amendments to the invention itself, the patent application, or even the broader IP protection strategy. A patentability search should be viewed as a great opportunity to scout ahead and study the IP landscape.
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What is a Freedom-to-Operate Search?
A patent is inherently a negative right, meaning that it grants the patentee the right to stop others from making, using, or selling an invention, but it does not guarantee the patentee’s own right to make, use, or sell it. Patent infringement is possible when commercializing a patented or a non-patented technology. For example, if you invent an improvement to an existing product, you may be able to patent the improvement as long as all patentability requirements are met. However, selling or making the improved final product in its entirety (original + improvement), whether or not the improvement is patented, could still infringe on existing patents on the original product. A freedom-to-operate (FTO) search can highlight any issues you’ll have practicing your invention and may allow you to adjust their commercialization strategy accordingly.
An FTO search does not consider patentability. It is instead used to assess whether the commercialization of an invention would infringe on existing patent rights. Unlike a patentability search, an FTO search would be limited to jurisdictions where you plan to make, sell, or use the invention, patented or not; and the subject of the search would be limited to valid patents only, as valid patents are the source of the exclusive right granted to the patentee to protect an invention.
After technologically similar patents are identified, the subsequent analysis focuses on comparing the invention at issue with the legal protection created by the competitor’s patent(s) to assess the likelihood of infringement.
There are several stages in which you may wish to conduct an FTO search:
If existing patents are found to significantly limit a company’s freedom to operate, there are a number of available recourses, which might include designing around the existing patents, paying for a license, cross-licensing, or patent pooling with competitors. The exact tactic would be highly dependent on the specific circumstances.
While an FTO search serves to identify potential issues that could impact the commercialization of an invention, it is in no way a guarantee of any "freedom" as the name might suggest. The FTO analysis is dependent on the comprehensiveness of the search and the subsequent opinion is dependent on the interpretation of the patent claims, both of which can be uncertain to some degree even to the most seasoned patent attorneys. Furthermore, much like the shortcoming of a patentability search, an FTO search is similarly blind to any patents that are already filed but are still within the 18-month confidentiality period prior to publication.
In summary, a patentability search is an assessment of the likeliness of receiving patent protection, while an FTO search assesses the risk of infringement in commercialization, regardless of the degree of patent protection already in place. Both can offer a peek into the future and before significant commitments are made, to address potential problems at a much earlier stage. This could in turn lower the risk of incurring financial losses either from wasted resources on unsuccessful projects or unfavorable outcomes from infringement. This minimization of risk can also improve a company’s chances of finding business partners and investors to support its current operations and future growth.
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