Here at Global Patent Solutions, we see many individuals new to the world of patent law wondering about the distinction between different forms of patent search. There are two major kinds of patent search that we often see confused: prior art searches and patent clearance searches. Prior art refers to evidence that suggests an invention has already been discovered. It's important to conduct a prior art search to ensure that it's worthwhile to go forward with a patent application. A patent clearance search, on the other hand, is usually more in-depth, and conducted to evaluate whether a product will infringe upon a patent.
Reasons for Prior Art Search
Prior art is the body of knowledge that is known to the public. We typically refer to patents and printed documents as prior art, but prior art can really take any form. For instance, a conference presentation is prior art, whether or not it was recorded or disseminated. A YouTube video is prior art also, and you can expect to see an increasing number of USPTO rejections that cite such things. Even an existing product is prior art, which extends to the public use of an existing product regardless of that product being for sale.
Searching for prior art is often discussed in the context of a patent application or patent litigation. A patentability search is conducted as part of patent preparation and prosecution. If a patent examiner finds relevant prior art during the patent prosecution phase, it may be necessary to narrow the scope of your claims; this is called “drafting around” the prior art. In the context of litigation, you may want to obtain an invalidity search as a first step to invalidating another’s patent. Every invalidity argument is based upon prior art that may have influenced the patent examiner’s decision to allow a patent had he or she known of the prior art. In each case, a specific set of skills and tools are needed to perform the underlying search for prior art.
Keep in mind that secret art is everything else that was not known at a particular time. If you use secret art for a commercial purpose, it is known as a trade secret and may be entitled to legal intellectual property protections. However, secret art cannot prevent a patent from issuing nor will it lead to the invalidity of a granted patent.
Here are various reasons to conduct a prior art search pursuant to a patent application:
- To assess if a new invention can be patented
- For inspiration to get new ideas
- To compare existing technology with a new concept
- Research for planning new products
- To gather information for improving a product
Here are various reasons to conduct a prior art search pursuant to patent litigation:
- To find prior art that a patent examiner should have considered
- To find a date-verified source for prior art that you know about
- To search for prior art in a foreign jurisdiction
- To search for prior art that was publicly available but only recently indexed in electronic databases
- To search for specific products or software that are now known to be have been prior art
Any person can perform a prior art search using free online tools. However, a thorough and comprehensive search is best executed by a trained professional patent searcher using the best tools and databases. The team at Global Patent Solutions supports a wide range of inventors, law firms, and corporations. We have the right people, the right training, and the right tools to find whatever you are looking for.
Patent Clearance Search
A patent clearance search, also known as a freedom-to-operate search, is a step to assess whether a product will infringe upon an issued patent. The underlying product might be for sale right now; if the clearance search uncovers an infringement risk, it would be prudent to mitigate continued infringement. If you are considering making, using, selling, or importing the product in question, an infringement risk uncovered by the clearance search will inform your decisions on further refinement and development of the product.
Risk mitigation can take many forms if you are actively infringing upon a patent. In some situations, you may seek to reach the patent owner for a licensing deal. On the other hand, you may choose to quietly cease infringing operations while you formulate a plan. In many cases, companies are able to alter their products in subtle ways to avoid current or future infringement.
Regardless of the actual infringement risk, clearance searches often contribute to product development. Often it is possible to tweak your design to “design around” the infringement risk. Similar to a game of cat and mouse, the intent is to change your own product so that an infringement risk becomes simply prior art. If you are able to design around the infringement risk, you could immediately start to make, use, sell, and import the now non-infringing product.
You could perform this sort of analysis yourself. However, due to the sensitive nature it is usually recommended to consult with a patent attorney before concluding that your invention does not infringe upon another patent. He or she can offer a legal opinion as to any clearance issues, and the patent attorney can offer invaluable counsel about modifying your product. You may even find that the modified, non-infringing product now qualifies for patent protection in its own right!
If you think that a clearance search is needed, feel free to contact the pros at Global Patent Solutions. We can help with any level of patent searching, and we can work with you or with your patent attorney to define the search and produce results that are relevant to your particular situation.