Patent Searches and Opinions: Patentability vs. Freedom to Operate

Introduction

One question that often comes to mind when faced 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 owner’s short- and long-term business objectives are, different forms of intellectual property protection may be suitable: patent, industrial design/design patent, copyright and trademark. This article focuses on utility patents and design patents, as they have similar considerations apply to each. Utility patents, or just “patents” in Canada, protect new and useful inventions (for example, a trash compactor). Design patents, or “industrial designs” in Canada, protect visual elements of a design applied to an article (for example, a design patent may be obtained for a shoe design). If patent protection is desired, a patentability search and opinion will often be conducted to verify whether the invention is likely to be eligible for a patent.

The next, and related question, concerns whether the idea or invention comprises, in whole or in part, something which is already the subject of a patent such that another party may sue you for selling it. 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. Answering this question early in the process of commercializing an invention can help patent applicants assess the potential costs and benefits of a patent before making substantial investments into their intellectual property protection. If their invention comprises a patented element, applicants will have to consider the cost of licensing the rights to that element and the costs of obtaining their patent and compare these with the anticipated profit from commercializing the invention.

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

A patentability search attempts to address the first question by assessing whether the invention may be patentable in view of what has previously been invented and disclosed. A comprehensive search can alert prospective patent applicants to obstacles likely to be encountered in the course of prosecuting an application for their invention, enabling informed decision-making and preventing substantial investment into an application that is not likely to be allowed.

The first consideration when embarking on a patentability search is the scope of the search. In order to get a patent, the invention must be new (this is referred to as the novelty requirement for patentability). An assessment of an invention’s novelty is made having regard to any publication anywhere in the world, so the potential scope of a patentability search can be immense. Relevant publications, also known as prior art, are not limited to patents and patent applications, and may include scientific papers, webinars and books.

In order to keep the time and cost associated with the search within a manageable range, however, most patentability searches focus on English-language patent databases (US, Canada, Europe) supplemented by searches in relevant technical databases, if available. The searches may be based on keyword searching and/or classification searching. Generally, Canada uses International Patent Classification (IPC) is used while the United States uses the Cooperative Patent Classification (CPC). 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. In the case of a patent, all of the publication is relevant and not just the claims defining the owner’s monopoly.

That being said, the disclosure 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, may be enough publication if it enables someone to figure out how to make and use your invention.

In addition to novelty, the other factor affecting patentability is obviousness. The key difference is that novelty requires all elements of the invention to be found in a single publication, whereas an assessment of the obviousness of an invention can include consideration of combinations of publications and even common general knowledge. So, while a publication may be missing an element of your invention, and thus not be a concern as far as novelty, if that element is found in another publication, then these publications would still pose an obstacle to your application on the basis that, combined, they render your invention obvious.

An assessment of obviousness can sometimes be made on the basis of the same search as novelty but requires more extensive analysis. Thus, a patentability opinion covering both novelty and obviousness involves more time and cost than an opinion which 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 nonetheless potentially present a risk to the patentability of an invention, as patents are based on a first-to-file system (i.e., the person entitled to a patent for an invention is the first person to have filed for it). Unfortunately, this represents a risk inherent in filing a patent application, there is no opportunity to review these applications until their publication date. In addition, a patentability assessment is directed towards the proposed invention as described in the assessment. Further tweaks to the proposed invention may alter its elements and require consideration of additional prior art and change the odds of patentability.

A final issue to bear in mind is that it is possible to be granted a patent for something that is already partly claimed in an existing patent, primarily when patenting an improvement to an existing product. A patentability search is directed to an assessment of the elements of your invention which are not already known, with limited consideration of those elements which are known. Thus, a green light as to patentability does not guarantee freedom to operate (i.e. freedom to practice your invention without infringing someone else’s patent), 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 question, 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 need to consider both a US patent search and opinion and a Canadian patent search and opinion – recall that the exclusive rights embodied in a patent are the exclusive rights to make, use, import and sell the invention If you intend to do any of the foregoing in relation to your invention in one or more countries, you should seek assurance that doing so in those countries does not infringe a patent.

Another distinction between a freedom-to-operate search and a patentability search is that a freedom-to-operate 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 focuses on the claims of the patents, as the claims are the section of a patent that determines the scope of the monopoly granted to the owner, 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 the claim’s essential elements must be present in the invention for infringement to be made out.

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

Notably, while the search alone is generally equivalent in time and cost to a patentability search, the nature of the requisite analysis in a freedom-to-operate search is much more detailed, requiring interpretation of the patents found in the search and substantial awareness of the relevant jurisdiction's patent laws and jurisprudence.

Thus, a freedom to operate opinion is often substantially more costly and requires more time to prepare. For this reason, 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 efforts 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, however, 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.

Contact us now for a complimentary and confidential initial telephone appointment if you would like our help with a patentability search and opinion (also called a patentability assessment) or a freedom to operate search and opinion.