Patentability Search provides an inventor a broad perspective on whether his/her invention will pass the patentability tests. Specifically, these searches focus upon novelty or non-obviousness aspects of an invention.
Novelty is a requirement for a patent claim to be patentable. An invention is not new and therefore not patentable if it was known to the public before the filing date of the patent application, or before its date of priority if the applicant claims priority of an earlier filed patent application. As is obvious, purpose of the novelty requirement is to prevent prior art from being patented again.
Non-obviousness (also termed as inventive step) requires that an invention should be sufficiently inventive—i.e., non-obvious—in order to be patented. It seeks to answer the question whether the invention is an adequate distance beyond or above the state of the art”. The expression “inventive step” is predominantly used in Europe, while the expression “non-obviousness” is predominantly used in United States patent law. The expression “inventiveness” is sometimes used as well.
As can be appreciated, while the basic principle of non-obviousness determination is same across different jurisdictions, its assessment is not a precise science and varies from one country to another. This is where the assessment of a search team, with years of experience in similar technologies, can be invaluable.
A clearance search or a “Freedom to Operate” search (FTO), however, has a very different objective. In an FTO search an entity (that need not be the inventor) is primarily interested in determining whether a particular action, such as testing or commercializing a product, can be done without infringing valid intellectual property rights of others. The entity is not interested in getting a patent.
As patent rights are territorial, an FTO search is specific to a jurisdiction. For example, a patent may have been granted in US but not in India enabling an entity to commercialize its product in India without fearing an infringement action, but preventing it from manufacturing in or exporting to the US the same product. Besides this simple example, there may be a plethora of reasons why the matter claimed in a patent/patent application could still be available for use to the entity. Patent may have been granted in one country but not in another as patent laws vary amongst countries. A granted patent may have lapsed as the patentee may have not paid regular payments required by various governments to keep a patent in force (known as annuities). A granted patent may have expired as patents are granted only for limited durations. Some countries may have exemptions for certain actions. For example, New Zealand allows certain types of clinical trials even if there is an existing patent. A claim of a patent may not ‘read upon’ the technology being considered. If all of a claim’s elements are found in product/technology, the claim is said to “read on” the technology; however, if even a single element from the claim is missing from the technology, the claim does not literally read on the technology and the technology generally does not infringe the patent with respect to that claim (doctrine of equivalence being an exception). The patent claim being infringed itself may have been granted in error and can be invalidated. Claims may be construed to cover some actions and not others, for example, because of definitions in the body of the patent specification, or admissions made by the patentee while the patent application was being examined.
Further, an FTO search has a strong bearing on licensing since an entity, once made fully aware of infringement possibilities of its product/technology may be amenable to negotiating for a license with the owner of IP rights it is infringing.
As can be seen, doing an FTO/ clearance search and rendering an opinion thereupon requires sophisticated and comprehensive knowledge of patent laws of different jurisdictions. With our decades of experience across different jurisdictions, we are fully geared up to render comprehensive FTO services.