Intellectual
Property PATENT SEARCHES
© S. Pal Asija 1997
There
are three types of patent searches.
I. Prior art patentability and Novelty search
which is generally done before finalizing the invention or the patent
specification also know as constructive reduction to practice. All patents,
publications and markets all over the world are searched for this
purpose. The fact that the patent is foreign or has expired is irrelevant
to this search. This is the most affordable type of search. It has 3 purposes:
(i) To make a GO NO-GO
decision on filing a patent application
(ii) To improve the invention
by piggy backing on the ideas of other similar inventions
(iii) To increase the chances
of getting a PATENT and to reduce the patent prosecution costs by hitting the
scope of the claims right on the head of the nail so to speak.
Even a prior art patentability
search should not be limited to U.S. Patent collection but should cover in
theory all publications or public disclosure of all countries in all languages
regardless of how old and even common law folklore knowledge handed down by
word of mouth from centuries and millennia.
II. Infringement
Searches are generally done
before commercialization or investment of huge sums of money in tooling and
advertising etc. Only unexpired patents in the applicable venue are relevant to
this search. Often it is necessary to draw claims chart of each patent found,
which is very "Intellectual" Labor Intensive task. One of the
advantages of such a search to the client is that it obviates charges of
intentional infringement and hence avoidance of treble damages. This is
true even if the inventor-entrepreneurs is strictly making, using and selling
the invention strictly according to his own PATENT.
The
rational behind this is that your patent may be an improvement over somebody
else's unexpired patent. The good thing is that in order to practice your own
patent you are liable only to the first patent owner but a third party must pay
royalties to you and the first patent owner unless the third chooses not to
incorporate your improvement. That is why the PATENT right is not an
affirmative right to make, sell and use your invention but a negative right to
exclude others from making selling and using your invention in the applicable
venues.
It
should also be noted that papers and patents do not infringe only products
infringe. The term infringement should also not be confused with Interference
in the United States Patent office which is litigation procedure in the patent
office to determine first true sole inventor based on first to conceive and
reduce to actual or constructive reduction to practice with due
"Diligence" which very subjective and fact dependent. This
interference proceeding is unique to USA and does not apply to other countries
as USA is now the only country which is based on first to invent concept rather
than first to file. The cost of such a search is generally a many tens of
thousands of dollars but is only small percentage of marketing and
manufacturing costs, especially when the PATENT right includes right for
INJUNCTION which makes most of patentee's investment worthless because all
hardware becomes scrap metal and all marketing and advertising expense instead
of becoming "goodwill" turns into "badwill."
III. Patent Validity searches are done
immediately before initiating a law suit, or after one is served with a law
suit for patent infringement. This search is akin to finding the proverbial
needle in the hay stack. Its cost is often many hundreds of thousand of dollars
but a very small price and according to some even a "BARGAIN"
compared to what's at stake. Often times it involves translation of apparently
close foreign documents and patents into English for the first time.
CAVEAT: This is brief synopsis is not intended to be legal advice for which you
should consult a qualified IP Lawyer before applying this information to your
circumstances.