Searching and watching
Our attorneys are all trained in the formulation of searching strategies, whether for the purpose of determining the state of the art relating to an invention, competitor landscape searching or freedom to operate (FTO) analysis. At the option of our clients, we can perform searching in-house or contract searching out to any of a variety of specialist searching agents in our network, either in Australia or overseas.
Novelty & state of the art searching
A search of patent documents and technical literature may be desirable to assess whether an invention is new and inventive. Depending on the circumstances and requirements of a client such a search may best be performed before or after the filing of a provisional patent application. For example, if further investment and expenditure on the invention is dependent on obtaining a patent, or if the inventor has limited knowledge of the relevant field of technology, it would be preferable to conduct a search before proceeding with the patenting process. Alternatively, searching may be deferred. The benefit of conducting a novelty search closer to the priority deadline (ie within a year after filing a provisional application) is that more prior art would have been published in the intervening period and the applicant may have more certainty whether a business case supports further expenditure on the matter.
In the event that the applicant is interested in obtaining foreign patent protection, conducting a prior novelty search would be a cautionary approach. However, even in these circumstances, a preferred option of our clients is often to file an international patent application (PCT application) and to rely on the International Search Report (ISR) which will issue during the international phase of the application.
It is important to realise that searching is not an exact science as it is impossible to consider all documents ever published anywhere in the world before the date of a patent application. However, a novelty search through patent databases can be a good guide to patentability and is a cost effective approach to put the odds in your favour that further expenditure on the patenting process is worth your while.
Searching may also be conducted to find prior art relevant to a patent or patent application of a competitor. For example, conducting a state of the art search is typically the first step in building a case in a potential opposition matter, a re-examination request, or revocation of a patent.
Infringement & FTO searching
Prior to launching a product in the Australian market it may be prudent to conduct a freedom to operate (FTO) search, also known as an infringement search, of the Australian patent register. We can perform patent infringement searches based on subject matter classification and keywords relevant to the invention. In view of the search results, we would be able to provide you with appropriate advice, including infringement opinions, validity opinions relating to the prior art located and the availability of suitable design-around options.
We can conduct periodic searching of patent databases to monitor the filing activities of your key competitors. This type of search can be conducted through the patent records of several jurisdictions including Australia and New Zealand.
In addition to monitoring patent activity of specific competitors, we can monitor patent developments in a particular technical field. A search of this type may be used to keep abreast of new products or new competitors that may be entering the Australian market or a specific market segment.