Patent prior art search & research, patent surveillance

Patent searches are fundamental for the applicants and for the proprietors of a patent as soon as they represent one of the tools that could help save time and money and lead to a stronger patent. Different types of searches are performed based on a particular client need: a prior art search, patentability search, invalidation search, freedom-to-operate (clearance search), surveillances.

Our patent attorneys have an every-day experience with the most complex (free and payed) search tools, selecting the best combination of patent databases covering more than 120 countries. A number of methods are used to get the most accurate search results, such as: keyword-based search (broad and narrow technical terms), classification-based search (IPC, CPC, US; ECLA etc), assignee and inventor-based search, patent situation analysis, non-patent related sources, etc.

Prior art searches and Patentability or Novelty Searches

Prior art search is a key tool in patent prosecution and litigation and is used to ascertain the novelty of an invention and to understand what is already known about the invention.

Whilst a prior-art search is essential to determine the state of art before filing an application and is aimed directly at searching direct and indirect competitors IP assets, a different type of search could ascertain, instead, the novelty and the inventive step of the clients’ own invention. Thus, the patentability search would reveal whether there are any previous patent or similar disclosures that might obstacle the inventor in patenting their invention. So a patentability search is designed to tell you the likelihood of obtaining a patent on your idea.

The combination of both a prior art search and a patentability search, with an additional research of the specific field-related publication, might form a state of art patent search which is a comprehensive search providing a general idea about the state of art in a particular industry field with a particular focus at the novelty of the invention.

Invalidation Search

Patent Invalidity searches are performed with the aim of validating or invalidating one or more claims of a competitor’s patent. Usually this type of search is carried out in a patent infringement lawsuit or to assess the strength of a granted patent during a licensing negotiation.
Often the purpose of the invalidation search is to find a prior art document that might invalidate a patent or become prepared to counterclaim in a patent infringement allegation by a competitor.

Freedom to Operate Search (FTO)

The FTO search is largely used by our clients before they start the commercialisation of their product or technology in a specific (often new) market. The Freedom to Operate search is aimed at reducing risks (and at mitigating the eventual litigation costs) of third party’s intellectual property rights violation or infringement in a particular jurisdiction. Our patent attorneys perform a Clearance Search and non-infringement search for any granted valid patent or patent application.

The clearance search reveals fundamental in choosing the right timing to market a product or a technology in the light of competitors’ patent expiration date. This type of search is indispensable in licensing and mergers and acquisitions agreements.