Patent Searches

The patent literature is searched for many different reasons, and the scope of the search varies depending on the information needed and the purpose to which it is to be put.

When looking for technical information in a particular area, patents are simply viewed as part of a larger search that includes all types of published literature. It is often stated that the majority of the information in the patent literature appears only in patents and is never published elsewhere. The fraction of information published only in patents depends on the subject covered. Electrical and mechanical inventions are more likely to appear only in the patent literature. Pharmaceutical data that is published in both patents and journals usually appears much earlier in a patent than in a journal. This is due to the desire of patentees to keep valuable new technologies secret until patent protection is assured. Once the patent application is published, then a claimed compound or methods for making and using it become part of the public record and there is no further need to keep research results secret. The information in a patent application may or may not be suitable for publication in a refereed journal; the standards for judging patent claims to be new and inventive are quite different from the standards for refereeing submissions to a journal. Particularly in the pharmaceutical industry where relying on trade secrets to prevent others from copying new therapies is prevented by regulatory requirements, all significant new compounds and methods of treatment are patented. Patents are often used as a current awareness tool for tracking the latest developments in a particular area, and they are also a good source of competitive intelligence, providing information on the research interests and latest discoveries of competing companies.

Patentability searches are done before the filing of a patent application in order to determine whether a new compound, a new class of compounds, a new method for treating a disease, or a new use for a known compound or class of compounds is sufficiently unique and nonobvious. The patent laws of most countries require absolute novelty as a condition of patentability; that is, nothing that fits the definition of the invention in the claims of the patent must ever have been disclosed to the public before the filing of the patent application. As patents are only granted for inventions that are new and not obvious over the prior art, a patentability search seeks to find all relevant information published anywhere in the world, whether in a patent, a journal article, the abstract of an oral presentation, an academic dissertation, or any other type of publication. In addition, public use of an invention before the filing of a patent application is a bar to patentability, but this kind of prior art is usually difficult to discover. A thorough patentability search allows the patent attorney or agent to distinguish the invention to be claimed from prior publications, but the law does not require a prefiling patentability search. Patent examiners perform a patentability search on each patent application filed. As the examiner's search is performed after the application date, it is possible for the examiner to include all of the prior art available up to the date of filing.

Before introducing a new product or modifying their production methods, companies perform searches to establish their freedom to make or use a product or a technology. These are known variously as freedom to use, freedom to make, freedom to practice, or freedom to operate searches. The objective of these searches is to find any patent with claims that would be infringed by the planned activity. A freedom to practice search is more limited than a patentability search in that only the claims of granted patents that are in force in the countries of interest are important. Because patent applications are published before grant, a thorough search would include patent applications that may eventually become enforceable patents. For a U.S. company, for example, a search would cover U.S. granted patents, published U.S. patent applications, and PCT applications that designate the United States or were filed in the U.S. Patent and Trademark Office. Each patent discovered during the search should be checked in legal status databases to determine whether the patent is currently in force and when it will expire.

After the publication of a patent application or the grant of patent, potential competitors of the patent owner may have occasion to perform an opposition or invalidity search. Like a patentability search, the objective of the search is to find publications that would demonstrate that the claimed invention was described or suggested prior to the filing of the patent application. A successful opposition or a court decision finding a patent to be invalid or unenforceable will shorten the patentee's term of market exclusivity and open the way for the competitor to introduce a generic version of the drug covered by the patent. Since an opposition or invalidity search is performed after grant of the patent, several years after filing of the priority patent application, publications published by that date will be accessible through indexed databases or other collections of information. Competitors generally have an incentive to perform a thorough, comprehensive search; such searches often succeed in finding art that results in the invalidation or withdrawal of a patent.

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