The language and logic of patent law often require taking one step forward and two steps back in order to accurately explain some terms and ideas.
So it is with the simple and direct question in this blog post’s title: “What is a patent search?” The first step forward is a simple answer to that direct question: A patent search is a hunt through patents and published patent applications for prior art.
Now we find ourselves backing up to explain the term “prior art”: It’s evidence that your invention isn’t new or “non-obvious.” (“Non-obvious” is a patent law term that refers to the difference between what was known before and your invention). The difference should be sufficient enough so that a person of ordinary skill in the field related to your invention would not find your change an obvious one to make.
One of the common reasons the USPTO gives in patent application rejections is prior art (meaning that your invention isn’t new enough or novel enough to be patentable). Your idea was already known, in whole or in part, before you filed your patent application.
Using the patent classification system, the person conducting the patent search will examine the text and illustrations in patents and patent applications for inventions that might be similar to your invention.
There are four main types of patent searches: Novelty, freedom to operate (FTO), non-infringement and validity searches.
The most common patent searches are novelty (patentability) searches. This search determines if your invention is patentable, but does not determine if your invention infringes any other patents. Novelty searches can also help inventors to understand the market and possible competitors.
FTO (aka right-to-use search)
The FTO search determines if you are free to commercialize your invention without fear of being sued for patent infringement. FTO searches often take more time and are more complicated than novelty searches.
Non-infringement (aka infringement search)
The non-infringement process is very similar to the FTO, except that the focus is narrower. A non-infringement analysis determines if your invention will infringe one particular, identified patent. It’s not a proper search because the problem patent has been identified. The non-infringement opinion typically comes from a patent attorney.
These searches are often conducted for a defendant (or potential defendant) in a patent infringement lawsuit. The goal is clear: to determine if the patent in question is enforceable. Other validity searches are conducted before purchasing or licensing patents, so that patent strength (and the need for the purchase or license) can be assessed.