Patent searches are used to identify information about patents and help to discover technical innovations. The objective of searching for patents is to provide an overview of existing inventions and to discover the state of the art as well as to identify third party intellectual property rights. This is important in order to assess the chances of getting a patent for an invention granted. Another type of search, a so called freedom to operate (FTO) search, is used to check whether a product or process infringes third party patents. Furthermore, patent searches give an insight into the technical progress of a competitor and may serve as inspiration for future developments. For these reasons, there are different types of searches for patents with different objectives:
Assisted patent search (APS)
Patentability searches can be carried out by professional search service providers. A cost-effective alternative for startups is the so-called Assisted Patent Search offered by the Swiss Federal Institute of Intellectual Property (IPI) to Swiss startups, Swiss SMEs, individual inventors from Switzerland and to Swiss public research institutes. During the Assisted Patent Search, a patent search is carried out at the IPI together with the inventor. The APS provides an initial overview of the state of the art in the technology sector of interest in order to assess whether the invention is new and worthy of applying for a patent. In addition, the Assisted Patent Search provides information on the patent system, shows various patent application procedures and will teach the inventor what to pay attention to once the patent has been granted.
Patent Application Search
Novelty and inventive step are two essential requirements for a patent to be granted. As outlined in an earlier blog [LINK], we often recommend startups to file the first patent application in Switzerland as the official filing fees are low. Once the Swiss application has been filed, the applicant may request one of two searches to be performed on the basis of his application: a national search or an international-type search.
In a national patent search, the IPI conducts a search in patent and scientific technical databases. Relevant hits are documents which are prejudicial to novelty or which render an invention obvious. On a side note, it is a virtually universally accepted principle that it is irrelevant for the assessment of patentability if the inventor was actually aware of a given piece of prior art or not. Based on the results, the chance of getting a patent granted may be estimated. This allows to decide the further steps: i) whether the application should be maintained and the application should also be filed abroad, or ii) the patent claims have to be amended or iii) the patent application should be withdrawn. For the Swiss National Search, a search report will be drawn up, which contains all relevant documents found and information on patent family members. A categorization according to international standards shows the importance of the documents for evaluating the invention. The Swiss National Search is a very cost-effective search performed by the IPI and certainly worthwhile for startup companies (CHF 500.00 inclusive up to 10 claims; as of 12/2021).
The International-Type-Search has the same purpose as the Swiss National Search. However, this patent search is carried out by the European Patent Office (EPO) and is more expensive. If the applicant later decides to file a European patent application claiming the priority of the first Swiss patent application, it may be advisable to request an International-Type-Search report, since the search fee will be at least partially refunded during the later proceedings before the EPO.
Freedom-to-Operate searches (FTO search)
Freedom-to-Operate (FTO) searches are fundamentally different from prior art searches: Rather than starting with an own invention and asking whether it is patentable, you start with a commercial product or process and ask whether it infringes third party patents. An FTO analysis is used to identify technical IP rights of third-parties which can block the commercial use of a technical product or process. An FTO search provides market-relevant documents, a detailed evaluation and an assessment of the relevance of the documents. In contrast to patentability searches, FTO-related searches may be restricted to those countries for which the commercial use of the technical product or process is planned. However, international and regional patent applications are also taken into account, as national IP rights can also arise from these applications. Furthermore, in the context of an FTO search, only IP rights are relevant which are either still pending or have already been granted and are still active, because only these rights can be infringed. An FTO search is only a snapshot of relevant IP rights, however it can be very cost-intensive and always contains a certain residual risk due to the fact that even an extensive search can never fully exclude the possibility that a relevant patent is simply not found. Additionally, since patent applications are typically published after 18 months from filing, unpublished applications cannot be found and a certain degree of uncertainty will always remain.
Patent monitoring is a valuable and relatively cost-efficient tool for startup companies to keep an up-to-date overview of the IP rights of their competitors. Patent monitoring involves patent searches at regular intervals in order to monitor desired fields of technology, competitors in the market as well as legal and procedural status of already known property rights. This may allow an early detection of potentially problematic patent applications of competitors, may prevent cost-intensive duplicate-developments and may better protect the own patent rights.
Securing the IP rights of a startup company is crucial in order to secure funding and the long-term benefits from research and development activities. For this reason, it is important to know the relevant technological fields as well as the competitors in the relevant markets to avoid cost-intensive duplicate developments and to achieve market exclusivity. Various patent searches help to achieve these goals. Rentsch Partner AG offers free initial consultation sessions and specific consulting modules tailored to the needs for startup companies to help finding the right search strategy to secure new inventions in order to achieve market exclusivity.