Somewhere, something incredible is waiting to be known
Published on 25 Mar, 2020
The sentence above is a quote from a journalist, Sharon Begley, in an article interviewing the astronomer, Carl Sagan, and is often misattributed to him. How does it apply to patent searching? You’re the one with an idea for the incredible something, and you will want it known, but as I often see, just because that something isn’t known to you, doesn’t mean it isn’t known. A brainwave today just may have been someone else’s one hundred years ago too.
I’ve recently been telling you how to conduct aspects of your search, but I’ve never mentioned where you should go to conduct it, or why.
If you want to know if your idea is new, you’re going to conduct what is known as a novelty or patentability search.
You’re in Australia, you’ve heard of IP Australia, and that leads you to AusPat, or you’re in New Zealand and you find your way to IPONZ, and so on around the world. Is a search there enough? Not really. Novelty is global these days, and goes back further in time than either of those two, or any, databases cover.
While there are a few commercial patent databases available, you’re going to have search one (or more) of the freely available databases that contain a collection of patent applications from around the world. There are a couple of good collections by intellectual property organisations. These are WIPO’s PatentScope and the European Patent Office’s Espacenet. They don’t cover every country but they do have country coverage pages, so if you are particularly interested in a country not covered, you may have to go directly to that country’s national patent database.
A few other freely available collections not run by intellectual property organisations include Google Patents and The Lens. Try them all out as the interfaces are different, and you will find one is more comfortable and intuitive to use.
A second type of search that might commonly be undertaken at a layperson’s level, although far more risky if you get it wrong, is a freedom to operate search, sometimes known as an infringement or clearance search. This time you’re interested in knowing if you will be infringing someone else’s rights by importing, manufacturing or selling a product.
In this case you generally only need to consider the country or countries you will be doing any of those things in (bearing in mind that imporrting and exporting patented goods and processes is something of a legal minefield), so if that’s Australia you only need to search in AusPat. The other aspect of a freedom to operate search is that you only need to search applications or patents with a live status, or in AusPat speak, an ‘active’ status. You may also need to consider any application that recently became inactive as they could be restored to an active status. If you’re searching in a database that doesn’t allow status searching then a useful substitute is restricting the search to filing dates less than 20 years old (or 25 if you’re searching for a pharmaceutical). You’ll be searching through some inactive statuses but you will capture all active applications.
You can still use the collection databases above but you’ll also have to add a country restriction to your search.
If you want to find the location of your national database, here is a good place to start.
A third useful type of search is a state of the art search, or landscape search. This is where you want to know what’s out there in a particular field. As you’re more interested in what’s new, think of it as a date restricted novelty search, so instead of searching back as far as you can, possibly beyond the first instance of the field, you should restrict the filing date to a recent period such as the last ten or five years, depending on how fast the technology is moving. The most useful databases in this instance are the collection databases.
There is one last type of search you may have heard of, which is an invalidity or validity search. The two names appear contradictory but it just depends on which side of the pitch you’re on, whether you’re attacking or defending. It’s unlikely a layperson would ever have to conduct a search such as this, but think of it as a novelty search on steroids. You not only look at patent literature but also scour non patent literature as well, digging and digging until you’ve exhausted your options or your budget. A good novelty search takes me somewhere around five hours to complete, but an invalidity search will take many more than that.
So, go somewhere and look for that incredible something, and if you can’t find it, it’s already yours.