What is a patent search?
1. Patent searches come in a variety of different formats, but all them consist basically of a search of the databases of published patent documents, i.e. patent applications or granted patents. In the UK and most of the world this search ought to be of international patent documents as there is a ‘first-to-file’ rule in relation to patent protection, where the first person who files a patent document over an idea can claim ‘priority’ over that idea, anywhere in the world.
2. After a patent application and claims have been drafted Regional or National Patent Offices (i.e. the bodies who grant patent protection in each region or nation) will conduct searches of previously filed patent documents to see whether the claims of the application are new and inventive, or deserve patent protection.
3. Innovate provides a format of patent searches that aim to give an overview of patent documents filed at Patent Offices around the world, in relation to your idea or similar, and a broad investigation how others may have tried to solve the problem or similar. This could be called a review of the ‘state of the art’ and should provide you with ample information to help with ongoing design or development.
Is a patent search a failsafe way of knowing whether you will infringe someone else’s patent when you commercialise an idea?
1. The bad news, is that unfortunately there is no such thing as a conclusive patent search, and definitely not when no patent claims and application have yet been drafted to search against.
2. Even after developing an idea, and then drafting monopoly claims about it in a patent application, the Patent Office examining your application may not be aware of some documents. For example some documents may have been filed but not yet published, as there is typically a window of 18 months between filing and publishing a patent application. Searches may also be a matter of an individual’s personal focus and identification of the search’s limits.
3. The good news, is that patent protection is ‘territorial’, so relevant patent documents may be (1) in different countries, or in any event (2) not granted, or (3) even if granted may not have been maintained in force (i.e. periodic ‘renewal’ fees may not have been paid). Or (4) hopefully all three of the above. These documents may then be viewed simply as useful background information for you.
So…why do a search?
1. In fact, many patent agents do not recommend conducting a search when drafting a patent application for you (‘pre-drafting searches’). The reason for this is that only Patent Offices in the nation or region in which you apply for a patent will be able to tell you whether you are going to get a patent granted there (i.e. in the UK the Intellectual Property Office). And even this may be subject to challenge. Patent agents will therefore often prefer to draft a patent application and submit it to the Patent Office so as to allow the Patent Office to do the searching. Patent agents are highly trained individuals concerned with drafting patent applications for a living. Any search they do provide will be typically tightly focussed on a few documents and accompanied by their professional opinion as to whether a patent application is liable to succeed in relation to these few documents. And this is if it were drafted purely on the idea as is, with little consideration of development potential or design considerations.
2. This approach can mean that expensive patent applications may be drafted too early for inventors who do not yet have a considered, designed, presented or market tested idea, or fully developed potential.
3. Innovate Product Design instead are a design company with a very commercial outlook and we know that searches can be invaluable sources of information for the design-led development of an idea. The results of an Innovate search will typically comprise 50-75 documents and permit you as ‘the expert in the field’ to review the size of your field, who else is in it and where the fences are. We provide cost-effective pre-design searches about your idea as it is presented to us, but also as understood by us with our knowledge of successful design and development… and the results create a stronger more original design.
4. The international patent database is the largest source of technical information in the world, and Innovate pay to maintain a subscription-based search portal that allows us to more effectively review the field of your idea.
5. Finally, there are many patent documents that have been filed over ideas that have never made it to the market, which would not be found by a simple search of the internet.
Will the Patent Office need to do their own searching and how easy is it to get a granted patent?
1. Any search conducted before filing a patent application at a Patent Office is not ‘official’. The Patent Office will therefore need to conduct their own (official) search and examination, primarily of patent documents. Often this official search and examination will identify new documents, for the reasons discussed above.
2. The Patent Office may be incorrect, may be directed differently by the content of the patent application and claims, or may focus on different aspects of an idea. In order for you to obtain granted patent protection over your idea or aspects of it, the Patent Office will need to be responded to. This will ideally be by a professional such as a patent agent, as the response needs to be clever and argue round the documents that the Patent Office argues have anticipated your patent claims and idea.
3. Making the argument to the Patent Office that you have something new and inventive is a skilled and subtle job and should be handled with care. Patent agents are trained in this, but the background of a well-thought out idea and design will be invaluable.
4. It is not easy to get a world-wide monopoly over an idea, as potentially the monopoly will be of great value. But the better developed your design/idea, the more likely it is that there will be new and inventive features or combinations of features that your patent agent can tease out and focus on when responding to the Patent Office.
What if the Patent Office does not want to grant my patent application?
All is not lost. As long as there are no problems with infringement of someone else’s protection, when it comes to strong design there is typically potential for registered design protection. And, unlike in relation to patent protection typically there is a ‘grace period’ for obtaining registered design protection after you have made the design public. But remember it is helpful for enforcement to have the design registered before you make it public.
That no search can be definitive;
Unfortunately even the best design work is no guarantee of patent protection;
Patent protection does not equal commercial success;
Granted patent protection may not be the be all and end all.
Bear in mind that new product development is an adventure. As with any adventure it is best to be prepared. And preparation makes sure you have the best design of equipment for later obstacles.