Patent Infringement, Novelty, Invalidity

Patent searches might be conducted before an application is launched, while it is in progress or after it has been accepted.  It may be conducted to protect the rights of the patent holder or to defend a user against an accusation of infringement.

In all cases, the patent attorney’s knowledge of patent legal issues and the specific industry technology will determine the effectiveness of the patent search.

Patent Novelty Search

A novelty search is one which can first be conducted by the inventor, without help.  If the search determines that the item is new and has never been marketed, the inventor should consult an attorney.

The attorney will conduct a more comprehensive search and the cost of doing so is easily justified.  Prior art – that is, indication that the technology for the product, or the product itself already exists somewhere in the world – may be found.

If so, either the application will be rejected, or will later not survive a challenge.

Patent Infringement Search

This type of search might be conducted by a company attempting to avoid potential patent infringement and the risk of an expensive lawsuit.  It is more focused than other searches which must examine the entire industry, both currently and historically.

A search for infringement looks at existing patents in the field only, since it is made to avoid attack from one of them.  This reduces the task to 20 years – the ordinary life of patents.

The claims made in each patent will be scrutinized.  They are the elements which will determine if use of the product may be deemed infringement.

This search is often called a “clearance search” because it clears the way for the company to proceed with their plans.

Patent Search for Invalidity

This search is also termed a search for validity.  It is used by the alleged infringer in response to a lawsuit.

This search may also be for prior art.  It differs from the novelty search which is based on a description and drawings of the product in that it is based on the patent itself.

The goals of the patent search for invalidity are to refute the claim that infringement has taken place. There are a number of ways to achieve this.

• Find prior art indicating that the patent should not have been issued.
• Find information in the public record which precedes the filing of the patent.
• Find information that invalidates one or more claims – unique elements of the invention – listed in the patent.

This type of search is more comprehensive than a novelty search as it dissects the patent, clause by clause.  It is also more broad than an infringement search because it will search throughout the industry, in any historical period.

To summarize, the differences between the three types of searches are:

• Beneficiary of the search
• Purpose of the search
• Timing of the search

A search for novelty is conducted on behalf of an inventor to prove that a product is patentable and may be accepted by the patent office.  It happens before the application.

A search for invalidity is conducted by an accused infringer to refute the charge. It happens after the activity has taken place and the accusation has been made.

A search for infringement is conducted on behalf of a company before undertaking to use or sell a product to avoid a potential lawsuit.  It happens after the patent exists (if one does) and before any business activity starts.

A patent search, whether for novelty, infringement or invalidation is a critical step in the process of patent acceptance and litigation.  The patent lawyer who is both thorough, legally astute and technologically aware is indispensable.

• If you have questions or need legal help regarding an Intellectual Property matter, Submit Your Case for a Free Evaluation with a local certified Intellectual Property Lawyer. There is no obligation to receive legal services.