What advantages does patent search provide? Types of patent search

2008-09-28

Many inventors underestimate patent search, considering that all necessary information for patenting can be found by using web search engines and free online patent databases. Even without taking into account that not always all information is open and its analysis can be demanding, many people do not know about all aims the patent search can help to achieve.

Patent search includes not only preliminary search, conducted to determine uniqueness; there are also its other types, which are used for achieving various purposes.

In Ukraine conducting of patent search is not mandatory, but, with its help, you can get more success with your invention anyway.

Depending on aims and results, there are following types of patent search:

  • Search on patentability (preliminary search)

It is the most popular type. An above search can be conducted before patenting, to find out if such invention already exists, and to estimate the risks and chances for successful registration.

It is worth noting that, for determining of novelty, a patent search is provided as through patent, and non-patent literature, as not only patents registered and applications filed can become a reason of refuse, but also the information contained in publications, dissertations, catalogues, and others.

  • Freedom-to-Operate search

This type of search allows to determine a possibility of infringement of other persons rights. It has a territorial effect, as can be conducted only for every country separately. The freedom-to-operate search s usually requested before entering new markets or launching of a new product to fend off possible charges from other persons or companies. For such industries as pharmaceutics, a freedom-to-operate search is very common, as launching of a new product always requires huge costs, and it is hard to evaluate all possible risks among such a big number of products existing without professional assistance.

It should be pointed that the results of this type of search can significantly differ from the results of a search on the patentability. For example, even if the recipe of your cream is new, it can infringe the rights of the third parties because of containing certain ingredients.

  • Theme-based search

It is conducted in a certain field or concerning a person/company. A theme-based searchi helps to study about particular industry or technical decision you are interested in. The aim of the search is providing of full and detailed report according to a request, concerning a single or several countries. Presently, such countries as USA, Russia, EU and Asian countries are the most popular in theme-based search providing.

It can be useful for learning of the current tendencies in industry, identifying the inventors working in the same field and competitors companies, researching on the directions of their activities. Besides, you can focus your study on a single inventor or a company, to receive a full information about their inventions, businesses and activities related to your type of invention.

  • Search on validity/invalidity

This type of search is intended for analysis of possibilities for other patents invalidation. For example, if you received a claim of infringement from other inventor/company, of course, you may just stop producing your product, incurring losses. Another way – conducting of a search on validity/invalidity and identifying the chances for invalidation of this inventor/company patent.

In Ukraine, this type of search becomes of a high demand also because of a big number of patent trollsoperating in the country. As an example, Elast Holding Ltd. Company obtained over 900 patents for bumpers, brake blocks, track-rod ends and other automobile parts. Another Ukrainian company, ‘V.J.TIRES PROTECTOR (ВІ.ДЖЕЙ. ТАЙРС ПРОТЕКТОР), only for 2013-2014 years obtained 190 patents for automobile tyres.
Such persons and legal entities are specialized in patenting of another’s or well-known developments for the rights abuse for their profits. After patent registration, patent trolls usually enter patented products into the Customs Register, prohibiting their export and import by other companies and individuals.

In such cases, the distributors are forced to enter into negotiations, for receiving the opportunity to continue their activities. However, invalidation of troll’s patent is another way out, and search for validity/invalidity is intended for this purpose. Experts search for the information, which can anticipate an invention, through different sources, became publicly available before application filing.

  • Patent monitoring

Patent monitoring is a type of search conducted on a regular basis. It can be provided for companies or individuals in particular industry, for receiving a full information about all tendencies, novelties and new decisions, appeared during the period. Experts provide reports quarterly, or in another time framings.

For you to be aware, patent search is conducted within particular territory and period. For example, it is unreasonable to provide a search on smartphone technologies in the middle of XIX century, as there nothing to find yet.

It should be pointed, that the best option in choosing a search territory is to restrict it to the list of countries, where the possibility of technological decision inventing is the strongest. For example, if you are interested in IT-sphere, the patent search in USA, India, China, will be preferable; and for the alcoholic industry such countries are Spain, France, Chile, USA. The patent search covering all countries cannot provide qualitative results, as the volume of information is too large to discover.

Our IPStyle experts provide different types of search in Ukraine, Russia, Belarus, Kazakhstan, as well as patenting, including granting of Eurasian Patent. 

 



More information (external link) More information (external PDF link)