In our other articles, we introduced patent search/ patentability search and discussed the importance of conducting a thorough patent search before prosecution. The stage right after the “Eureka! moment”, however, is not the only one that could benefit from this powerful yet overlooked tool. Patent searches are potentially valuable — or simply unavoidable — in other major phases of an invention’s journey from its conception to its commercialization. Let’s analyze different types of patent searches available to find out the reasons and the stakeholders behind them.
4 other types of patent searches include:
4 Major Types of Patent Searches Besides Patentability Search
Invalidity Search
SUBJECT: A SPECIFIC GRANTED PATENT
SCOPE: PATENT LITERATURE + NON-PATENT LITERATURE
An Invalidity Search is carried out to identify references that could question the validity or enforceability of a granted patent.
The most common scenario involves an inventor or a company trying to invalidate a third party’s patent as a defense to an infringement accusation. By proving that the IP rights shouldn’t have been granted in the first place — because of non-novelty or obviousness of the invention, for example — they might succeed in getting the charges dropped.
Specularly, the owners of an infringed patent could resort to it when considering a lawsuit. Before investing in costly litigation, in fact, it would be wise of them to verify the strength of the patent and anticipate the defendant’s attempts at invalidating it.
Licensing is another area in which Invalidity Searches are widely used. In this case, both parties are involved: on one side, is the licensee making sure that the patent is worth the proposed royalties; on the other, the licensor tries to raise the royalties for those patents that are deemed to be highly “litigation-proof”.
Patent Clearance
SUBJECT: A SPECIFIC PRODUCT
SCOPE: PATENT LITERATURE
A Patent Clearance Search (often referred to as Freedom to Operate or FTO Search) is conducted by inventors or organizations before approaching the market with a new product or technology.
Its main purpose is to uncover patents (or disclosed patent applications) that might be enforced against the invention down the road, acting as “roadblocks” to the commercialization of the invention or the development of the technology.
Apart from avoiding the risk of violating others’ IP rights — with all the consequences in terms of litigation costs and lost investments — a Patent Clearance Search can also assist in estimating licensing needs and adjusting product development efforts.
Furthermore, since patents are enforceable exclusively within the issuing country, inventors can leverage them to discover unexploited markets for their invention or technology.
To sum it up, a Patent Clearance Search enables inventors or organizations to compare potential infringement risks with expected financial benefits.
Evidence of Use
SUBJECT: A LIST OF PATENTS AND/OR A TARGET ORGANIZATION
SCOPE: PATENT LITERATURE + NON-PATENT LITERATURE
Portfolio owners use this type of search to identify products that might be infringing their patents, mainly when looking for targets for a possible infringement lawsuit.
Since searching for products directly would be practically impossible — mainly for the lack of a comprehensive database — the first step is to look for patents that disclose similar inventions or technologies to those found in the portfolio. This will enable the searcher to check whether the assignees of those similar patents have products available on the marketplace, allowing for a further investigation of such products.
Outside of the infringement area, Evidence of Use Searches are also useful when considering a portfolio acquisition, to assess the potential of its patents to be enforced — and thus monetized — in the future.
In fact, the higher the number of patents that are similar to the portfolio being considered, the higher the chances for the potential buyer to enforce it in the future.
State of the Art
SUBJECT: AN ENTIRE TECHNOLOGY FIELD
SCOPE: PATENT LITERATURE AND SOMETIMES NON-PATENT LITERATURE
State of the Art Searches focuses on a particular technology field rather than a specific invention or product. The resulting literature is usually quite large and it offers an exhaustive overview of the state of the art in a particular industry.
Scientists, product development teams, and business development teams use it to understand the main technology pulses within the target field, as well as possible gaps in the patent application activity between their organization and the other key players in the industry.
Since the most interesting technologies are usually the newer ones, the time frame covered by a State of the Art Search is generally limited to three to five years.
For example, with growing interest in 5G radio technology and its trends, we can examine the patent landscape of 5G standard essential patents in China, or among a certain business sector.
An extremely broad and granular approach to this type of search is Patent Landscaping: by providing a categorization of patents within a technical field and a visual representation of patenting trends and technology’s development, it is widely leveraged to determine the feasibility of investing in a new market segment.
From venturing into new markets to protecting a well-established business, or even surviving the competition, different types of patent searches can make a difference in helping individuals and organizations find their way through the IP maze.
Find out how Patentcloud — our innovative and comprehensive AI-powered patent intelligence platform — can assist you in all types of patent searches mentioned above.
Or, you can read more about how to conduct patent searches by heading over to our Handbooks Section!
Originally published on February 20, 2019
