Patent Searches and their Loopholes: A Critical Study

Patent Searches and their Loopholes: A Critical Study-Prolawctor

The development of any kind of invention takes up a lot of time, effort and money. It is important to protect these inventions by patenting them. Patenting ensures that no other person claims your invention as their property. Patent are valid for 20 years from the date of their filing and hence are not granted to every idea that is ever ideated.

In case of sale or manufacture of a patented invention by a third party, cease and desist letters, and legal action could be taken. The most famous patented inventions are the telephone, the computer, he lightbulb, etc.

Patent Search means gathering information for prior art which are in public domain anywhere in the world.

A Prior Art[1] search means organized analysis of prior art material available from public sources. It may be provided in the form of:

  • Patentability/ Novelty Searches
  • Patent Examination/ Freedom to Operate / Clearance
  • Patent Validity/ Invalidity Search
  • Design Search
  • Accelerated Examination Search
  • Chemical Structure and Sequence Search
  • State-of-the-art searches

These searches are also used to determine the value of a potential investment[2].

The prior art can be made on many elements including patents, published patent applications, and non-patent literature. Non-Patent literature may include books, evidence of sale or usage, videos, technical standards, white papers, journals, physical forms and online resources.[3]

The other searches include:

  • Infringement Search
  • Landscape and Whitespace Analysis

Patentability / Novelty Search

A patentability/novelty search is conducted before filing an application to make sure if the invention is new.

Performing a patentability search fro prior art helps the inventor, lawyer, or a patent examiner to figure the existence or non- existence of their invention. The existence of a similar innovation known by the search saves time and money and enables the inventor to alter or improve his idea in a way that it meets the criteria of patentability.

Advantages of conducting a Patentability Search

  • It speeds up the process of achievement of Patents as prior art is already taken into consideration during the patent search.
  • It assists in drafting better claims by broadening the information horizons and adding information, thus, increasing the scope.
  • It saves the time and money of the inventor as he can alter or change his idea in case of an already existing invention.
  • It improves the strength of the patent by identifying and covering all the additional information and cases that the inventor might have missed out. Hence reducing the chances of the competitor to use the above cases to challenge the validity of the patent.
  • It shows the areas which require research and development investments. These are mainly in the cases of unexplored fields.
  • It helps to understand the value of the invention as the search discovers the uniqueness and value of the patent. This helps in monetizing and understanding the competitiveness it offers.

Loopholes

  • The results of a patent search conducted by a person himself may differ from that of a patent lawyer or a professional searcher. A lot of research on the subject matter is required to conduct an efficient search and there are high chances of missing out on important information without professional guidance.
  • Hiring a patent Attorney is an expensive process but will ensure complete search and grant of the patent.
  • By not choosing to conduct a patent search, and in case of finding of prior art by the examiner, the patent holder loses potential income and his patent rights. He becomes vulnerable and has to pay royalties in case the patent is involved in litigation.
  • As this search is only to determine the novelty of a product, it has a short-term focus which is narrow in use.

Accelerated Examination Search:
Accelerated examination searches include search strategy history and other information required by the USPTO[4] for a pre-examination document. USPTO has established procedures that require submission of AESD[5] that provide the required search history and explanation of relevance for the references and their application to the claims. This makes the issuance of the patents much quicker.

Patent Examination/ Freedom to Operate Search

This search enables people to sell or manufacture their product or invention without infringing the patents held by the others.  It is a due diligence process that focuses on finding out any active patents or pending patents applications that may obstruct a person’s freedom to operate.[6]

Importance

  • This search shows the risk assessment for patent infringement and future legal proceedings.
  • This search is done during the prosecution of a patent to determine if the patent application may be granted and to examine the novelty and inventiveness of the patents application.
  • It compares the possible future violations with expected financial benefits.
  • It also assists in the licensing needs and helps with the product development in the right direction.

In case of existing patents which limit Freedom to Operate, a person may:

  • Approach the patent holder for Sale or licensing
  • Make changes or establish a new change in the product that doesn’t overlap on any existing patent.
  • Go for cross-licensing of the product in which case, both the parties can give each other the license of using their invention.

Loopholes

  • It is a strenuous process as there are a great number of patents already in existence and, thousands of it are granted every week.
  • In case of launch of a product in different countries, searches must be conducted in each of those countries.
  • It is not economical and requires a lot of focus and time.

Infringement/Non-infringement Search:

This is similar to the FTO. Looks for un-expired patents with claims that may bar you from making, using, or selling a product. Determining and measuring the scope of infringement is essential for future litigations, royalty earning purposes and licensing opportunities. We understand the expensive attorney time and huge money involved in complex litigations and therefore offer strategic solutions for identifying technology standards or potential products that may be infringing your patents.

A significant point about conducting FTO and non-infringement opinions in advance of any allegation of infringement or commencement of a lawsuit is that if the inventor obtains a non-infringement opinion and later in time is sued for patents infringement based upon the same , that were analyzed in the non-infringement opinion, the court will consider the opinion and may negate a finding of enhanced damages for willful infringement which can often be “treble damages” – tripling the actual damages amount. [7]

This has been particularly significant in light of the Supreme Court’s 2016 holding in Halo Electronics Inc v Pulse Electronics Inc.[8] and Stryker Corporation v Zimmer [9] which lowered the burden to obtain treble damages in patents infringement cases. As such the importance to obtain such opinions cannot be overstated.

Patent Validity/ Invalidity Search

This search is conducted to identify references that can contest the validity or application of the claims of the issued patents. It is generally performed by patent holders or buyers before asserting, licensing, buying, or selling a patent to confirm the effectiveness of the claims.In the case of licensing, both parties are involved:  the licensee ensuring that the patent is worth the proposed royalties and the licensor raising the royalties for those patents that are considered to be high litigation-proof.

This search shows whether the patent is valid, or incorrectly granted and should be revoked or could be saved by amendment.

In the case of invalidity, the new documents discovered by the search must be better than the prior art on record disclosed by the patent examiner. Therefore, one can be prepared for any future attacks. Patents validity and Invalidity searches are highly skilled searches and are therefore, usually conducted by experts like Attorneys or patents search firms.

Reasons for conducting a Patent Invalidity Search:

  • On issue of a complaint of patent infringement from the owner.
  • On the receipt of a cease and desist notice from the patent owner.
  • Prior to enforcing your own patents to regulate invalidity risks.
  • Prior to buying a patent to explore the strength of it
  • To oppose a recently issued patent of a competitor

Documents to be provided for a Patent Invalidity Search:

  • Patent number and the detailed claims which have to be disposed.
  • The target priority date.
  • The prior art that is already known to you
  • Objective behind conducting a validity search

State-Of-The-Art Search

This is an extensive and wide search that is conducted over all the broad list of patent searches to gain an overall perspective of a particular field. The advantage of State-of-the-Art search over the other searches is that is very broad and hence provides a longtime market advantage, by helping make strategic decisions at the corporate level.

This search helps the organizations to ensure that they are in the right path to bring out the best for their investors and shareholders. To sum it up, this search makes sure that the organizations make better informed decisions. This search was conducted in the case of

Reasons for conducting a State-of-the-Art Patent Search:

  • It can be conducted by a party wanting to evaluate and understand a particular field before proceeding further into it.
  • To determine the most suitable future direction for their research by evaluating the latest and past developments in the field.
  • To see what art exists and to develop around it.

Loopholes

  • Since most of the interesting technologies are the newer ones, the time frame covered by a State-of-the-Art Search is generally limited to three to five years. This might result in missing out on important inventions made in the past and hence result in Prior art.
  • The resulting literature from the search is exhaustive and lengthy because they are conducted for a particular industry.

Technology Landscape Analysis and Research:

This search is an extensive study of the patents in the area of technology to understand the current and future trends in technology and explore lucrative business opportunities. Technology landscapes are an important asset in the technology development that sum up the IP activities of competitors, market overview and gaps (white space analysis) in the technology domain.

Design Search

Design refers to the shape, structure or pattern of a product. This patent considers the visual appearance of the product rather than the function of the invention. All design searches related to novelty, validity proceedings, clearance searches and landscape projects, require strong analytical abilities to understand the uniqueness and precise elements of each design.

Chemical Structure and Bio Sequence Search

Chemical structure search is required novelty in a specific chemical compound or entity. These searches are run on chemical structure databases and get refined results. Biological Sequence searches require a special skill set and cannot be undertaken by the common man. In this search, the novelty lies in the unique combination of nucleotide or amino acid.

General shortcomings of Patent Searches

Some companies intentionally do not apply for patents and hence do not conduct these searches of their products. This can be seen in the cases of Wimdu vs. AirBnB and Lyft vs. Uber. This is because their strategy is more focused on becoming an acquisition target and they actively choose not to expend resources in protecting their technology.

  • Technical information about the invention has to be disclosed to the government unless it is protected as a trade secret.
  • The searching process is lengthy, time consuming and expensive.
  • Patents have a relatively short economic life of 20 years as compared to the other IP types.
  • In case of disputes or even for effective searches, attorneys have to be hired and there is always a risk of lawsuits.

Other mistakes to avoid while searching for Prior Art:

“Avoid errors like

  • typos
  •  mistakes in search syntax; don’t complicate unnecessarily, the more complex the syntax the greater the chance of error 
  • misapprehensions about what a particular database cover.”[10]

Conclusion

This article discussed four of the most important types of patent searches that exist. Each has its own relevance and its own set of applications. These searches are not mandatory but are a wise investment, which reaps its returns in the long run. It is an important type of study and analysis providing comprehensive and up-to-date information on the field of interest. And hence, it is very important during the search to correctly select the databases that will be used by a researcher.[11]

– Pratyusha Ganesh


References

  1. United States Patent and Trademark Office, www.uspto.gov
  2. World Intellectual Property Organization (WIPO), Geneva. www.wipo.int
  3. Infringement of Patent Rights in India by Dr. Prativa Panda, Reader University Law College, Utkal University.BBSR-4, Jan 2016.
  4. History of Patent System, India: Intellectual Property India, Ministry of Commerce and Industry; c2004-2008 [cited 2008 Apr 2]
  5. Joshi M, Leela G. International Treaties and Conventions on IPR. Hyderabad: NALSAR Proximate Education, NALSAR University of Law; p.7-13.
  6. A detailed study of patent system for protection of inventions by G. Krishna Tulasi and B. Subba Rao.

[1] Prior art is anything in the public domain, patented or not patented, that may determine whether an invention is novel or not

[2] Basics of Patent Searching, WIPO Patent Drafting Course for Patent Agents from the ARIPO Member States and Observer States by Bastiaan Koster

[3] R D, Sathish Kumar. (2013). Patent Information Search Strategies for Information Professional –Case Study.

[4] United States Patents and Trademarks office

[5] Accelerated Examination Support Document

[6] https://www.greyb.com/types-of-patent-searcehs/

[7] https://patentlawip.com/blog/types-of-patent-sarches-and-opinions

[8]  579 U.S. ___ (2016)

[9] 136 S. Ct. 1923 (2016)

[10] Intellectual Property and Patent Information Search Strategies Topic 6: Strategies for Efficient Patent Searching David Barford Patents Consultant Cardiff, UK

[11] The role of patent and non-patent databases in patent research in universities, AIP Conference Proceedings 1797, 020017 (2017)

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