Patent Searches
Patent Search Service
The professionals at BIESSE conduct any patent search with precision and thoroughness, in anticipation of filing a patent application, or in order to challenge a competitor's patent, or for due diligence purposes. The patent prosecution procedure can prove costly in terms of time and resources when the patent application is filed without a clear picture of the state of the art.
Patent Searches
To avoid incurring unforeseen expenses and undesirable delays in the examination of the application, the professionals at the firm always recommend conducting a prior art search before filing a new patent application.
On the other hand, a patent search can prove decisive in seeking the invalidation of competitors' patents, or in highlighting weaknesses in the IP portfolio of a company being acquired.
Searches are also tools of competitive intelligence: they can provide very useful indications regarding any changes in the commercial strategy pursued by competitors, or regarding their new technical collaborations and new partnerships, or more simply they can provide indications as to their technical choices and investments in research and development.
Patent searches are a useful tool for patent owners both before the filing of a new patent application and after its grant. Different types of searches may be conducted depending on requirements: searches aimed at assessing patentability, searches aimed at assessing interference and freedom to operate, and monitoring activities, i.e. competitive intelligence on competitors' IP portfolios.
In many circumstances it is appropriate to conduct an independent prior art search before filing a patent application. For example, it is advisable to conduct a search where the technical field to which the invention relates is crowded with operators, or where there is a large cluster of patents or patent applications. Furthermore, it is advisable to conduct a prior art search when one is not certain of the state of the art in the technical field to which the invention relates.
The patent system is public in nature. In other words, patent applications and patents are subject to publication by the patent office; publication is normally deferred to the 18th month from the filing date of the applications. The publication of applications and patents takes place in dedicated digital registers of the patent offices, most of which are available online. The database of the European Patent Office, known as Espacenet and accessible at the address worldwide.espacenet.com, is one of the largest collections of published applications and patents, with over 100 million documents from the patent offices of the world's major industrialised countries. It is a useful tool for conducting patent and patent application searches. Espacenet's search interface allows keywords and dates to be searched across several fields: the title of the patent or published patent application, the abstract, the filing date, the publication date, the publication number, the proprietor, the inventor, etc.
A prior art search covers all information (relating to the content of an invention) available to the public at the time of the search anywhere in the world, and includes both published patents and other sources outside the patent system, such as scientific papers, promotional material, articles, videos and photographs, etc.
BIESSE always advises its clients to conduct a prior art search of patent databases before preparing a new patent application. Analysis of the prior art documents can make it possible to accurately identify the genuinely novel and inventive features of the technical solutions conceived or developed by the client. The patent application can therefore be focused from the outset on such features; this could lead to a rapid substantive examination by the patent office, with a corresponding minimisation of costs for the client, and to the grant of a strong patent that is well defensible in court.
A patent search can make it possible to identify documents useful for seeking the invalidation of a patent that a competitor has asserted against our client. If it can be shown that the basic concepts of the patent were already described, or suggested, in documents published prior to the filing of the corresponding application, or prior to its priority date, the court will declare the patent invalid. Invalidity may be total or partial.
Periodic patent searches are known as monitoring activities. Monitoring activities make it possible to verify the technical and strategic choices of competitors. By analysing at regular intervals the patent applications filed in the name of one or more competitors, it is possible to determine what choices have been made at the technical level (which inventions) and at the territorial level (in which states patent applications have been filed). Analysis of the legal status of a competitor's patent application or patent makes it possible to identify any abandonments in one or more states, extensions in other countries, the filing of third-party oppositions, the registration of licences, assignments, changes of ownership, etc.
