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Patent Searches and Opinions: Patentability vs. Freedom to Operate

Introduction

One question that generally comes to mind with a new idea or invention is how to protect it. Depending on the nature of the idea or invention, whether it is a product or service, and what the short- and long-term business objectives are, different forms on intellectual property protection are available: patent, design patent, copyright and trademark. This article focuses on utility patents and design patents, as they have similar considerations.

The next, and related question concerns whether another party is going to sue you for selling something they have already patented. While it may be possible to generate a snapshot of the commercial landscape, it is not always clear whether patents exist, and, if so, what their actual scope of coverage is relative to the invention in question.

While both questions appear similar, the legal issues and analysis are substantially different, and it is important to understand the different approaches taken to answer each question, and the limitations of the results.

Patentability Search and Opinion

The first consideration for a patentability search is the scope of the search. In order to get a patent, the invention must be new (novelty). Novelty is based on any publication anywhere in the world, so the potential scope of a patentability search can be immense.

However, in order to keep the time and cost practical, most patentability searches focus on English-language patent databases (US, Canada, Europe) supplemented by searches in relevant technical databases, if available. Even more simply, a basic Internet search using keywords associated with the invention can sometimes provide quick results.

The second consideration is how to analyze the documents found in the search. As novelty is based on publication, generally the entire document must be read and considered to determine whether the invention is fully (or partially) disclosed therein. Drawings, tangential commentary and even theoretical speculation from other parties can present issues for patentability.

However, the disclosure published does need to have some level of detail in order to act as a bar to novelty. A one-line speculation that is unrelated to the main content of a document may not be an issue, but a paragraph or two of discussion, and/or a drawing, is sufficient publication in many cases.

In addition to novelty, the other factor for patentability is obviousness. The key difference is that novelty requires all elements of the invention to be found in a single publication, whereas testing for obviousness can apply combinations of publications and even common general knowledge. So, where a publication may be missing an element of your invention, and thus not be a concern for novelty, if that element is found in another publication, then obviousness may be a concern instead.

An assessment of obviousness can sometimes be determined from the same search as novelty, but requires more extensive analysis. Thus, a patentability opinion covering both novelty and obviousness has an increased time and cost over one that considers novelty alone.

Another special consideration is that filed patent applications remain confidential (unpublished) for 18 months. So, while an earlier-filed, unpublished patent application would not be found in a patentability search, the earlier-filed application could potentially present a risk, as patents are based on a first-to-file system. Unfortunately, this limitation is part of the risk associated with filing a patent application.

A final issue to bear in mind is that it is possible to get a patent for something that is already covered by an existing patent, primarily when patenting an improvement to an existing product. A patentability search is directed to assessment of elements of your invention which are not already known, with limited consideration of those elements which are known. Thus, patentability is no guarantee for freedom to operate, which requires its own search and analysis.

Freedom to Operate Search and Opinion

A freedom-to-operate or clearance search is used to assess whether your invention may infringe on an existing patent, potentially leading to a lawsuit. A successful patent infringement lawsuit may result in monetary compensation to the patent holder, or even an injunction to stop sales and production.

For a freedom to operate search, the scope should be limited first to the jurisdiction where you plan to sell, make or import the product/service in questions, as patents are national in scope and enforcement. For example, if you plan to manufacture a product in Canada, but sell it in the United States and Canada, you would have to consider a separate search and opinion for both countries.

Additionally, the search is limited to patents, as only patents provide the right to sue, and other types of documents do not need to be considered. Thus, the scope of a freedom to operate search is generally more focused than a patentability search, although it may be complicated by the need to cover multiple jurisdictions.

Analysis of the search results is directed to the claims of the patents, as the claims are the section that determine the legal scope of the patent, although in most cases the entire patent will need to be reviewed for context. The claim elements are then considered against the invention, with the test for infringement being that all of the claim elements must be present in order for infringement to take place.

A more extensive search and analysis may also consider pending patent applications, although the results are more speculative, as the final scope of the application's claims is not determined, and the application may never issue as a patent.

Notably, while the search itself is generally equivalent in time and cost to a patentability search, the scope of analysis is much more detailed, requiring detailed interpretation of the patents found in the search and comprehensive awareness of the jurisdiction's patent laws and cases.

Thus, a freedom to operate opinion is often substantially costlier and requires more time to prepare. Therefore, the search is generally only recommended where one or more potential competitor patents is believed to exist and significant resources and business success are at risk.

Conclusion

It is important to get the right search and opinion to meet your objectives. If you are relying on manufacturing or licensing an innovative idea as part of your business model, a patentability search can provide the guidance needed to determine if patent protection is a likely possibility. If you are preparing to enter a field crowded with competitors, a freedom to operate search can help assess potential risks and guide your marketing and sales accordingly.

Finally, it is important to remember that the searches and opinions are simply that. At the end of the day, decisions on patentability are made by the patent offices, and even the most favorable clearance opinion cannot stop a patent holder from initiating a lawsuit if they believe otherwise. These considerations do not diminish the value and importance of searches for placing your business in the best position to gain value from its intellectual property and be successful.