One of the most common reasons an invention is rejected from being protected is the existence of prior art, or that the said invention is not novel and has already been, in fact, for some time now. Prior art generally comes in the form of evidence, proving that your invention was already publicly available before the date on which you filed a patent application. It is always recommended to conduct a prior art search to avoid submitting patent applications with unpatentable claims and will be quickly rejected. This, in turn, will help you create a stronger patent claim and reduce the number of amendments you might have to make at later stages.
To conduct a comprehensive Prior Art Search, it is pertinent to check different databases. This is to say that any information available to the public will be relevant during a prior search. Some practical ways to conduct prior art search are:
● Keywords: This will help narrow down the search while sticking to the invention’s key elements.
● Public databases: Platforms such as Google Patents, C-DAC portal, Espacenet, Patents Lens, etc. provide for a comprehensive search
● Patent Classification: Types of classification are CPC, IPC, US, ECLA, etc. These are used to identify inventions for specific types of patents and result in a more refined search.
● Journals, Articles, any published material, known commercial inventions, presentations at public conferences, previously held patent applications are also supposed to
A Patent Invalidation Search is an elaborate prior art search conducted once a patent is issued. This is done to look out for inventions that the patent examiner might have missed to look deeper into the particular class or domain of invention that might help create a strong defense in case of an infringement claim. This search is done to identify patents and non-patent documents that may impact the claims of a patent. Essentially, by conducting this search, it is easy to ascertain the novelty and inventiveness of a patent and further challenge it on the grounds of obviousness, non-inventiveness, etc.
An FTO Search or a Freedom to Operate Search is the final search conducted just before commercialization. It is performed to avoid any future legal action. It is also known as a patent clearance search to put your invention at ease, or in other words, to check if your product or process is being developed, exists, or could potentially infringe any existing patents. This search is unique because it focuses on patents that are most active and not on prior art. Further, if done comprehensively, it can cover all jurisdictions where the inventor decides to plan to launch that product or processWhilele it might be costly, this search shows that there has been an attempt at due diligence. The chances of a willful infringement case will reduce. Further, as it is the highest degree of a search for patents, it offers a sense of comfort and confidence concerning the business future, especially with the stakeholders and potential investors.
The main point of difference between a prior art search and an FTO search is that in a prior art search, the scope is limited to whether the idea for a product or a process can be patented. In contrast, in an FTO search, the search narrows down to existing, granted patents. Thus, the latter becomes costly and time-consuming and requires more sophistication. However, an FTO search results will end up saving lots of litigation costs.
It is important to note that all three types of searches are important and are valued in their own capacity. However, if looked at more keenly, it forms part of a systematic patent search. All the essential qualities and possibilities are checked with the prior art, with patented and unpatented inventions available in any public domain. The Invalidity Search looks to point out the lacunas in already patented or soon-to-be patented products and processes. Finally, by conducting an FTO search, all ends are, so to say, exhausted, creating a solid defense in case the patent is challenged, and in case there is scope for improving the claims, the same may be revisited to make it a strong and independent patent.
