Different types of patent searches

There are 3 main types of patent searches:

1) patentability search (aka novelty search);

2) patent validity search; and

3) freedom-to-operate (FTO) search (aka right-to-use or infringement search).

What is a patentability search?

The main distinction between these patent searches relate to the difference between what is patentable vs. what infringes.  Also known as a novelty search, a patentability search is the most common, affordable and practical patent search for entrepreneurs and startups. The purpose of a patentability search is to help you figure out whether your concept is unique over what already exists (“prior art”). To accomplish that, you first need to identify key features in your concept that you believe are novel. A patent searcher would then set out to find those features, or combinations thereof, in the prior art. The hope is that one or more core elements would not be found in the prior art (e.g., your concept comprises the combination of elements A, B & C; and the patent search results yielded only A & B, but not C).

What is a validity search?

The same principle is at work in a patent validity search where the purpose is to gauge the validity of a (granted) patent’s claims by looking for prior art showing the claimed elements. Typically, a validity search is directed to finding new prior art that was not referenced during the course of the patent-pending application process (aka “prosecution history”). Such a search may be valuable prior to engaging in either a major monetization event, such as licensing or selling the patent, or in a major enforcement effort, such as litigation.

What is a freedom-to-operate (FTO) search?

The purpose of a freedom-to-operate or right-to-use search is to determine how to avoid patent infringement. The focus of an FTO search will center around the patent claims. The goal is to see if your product or service omits at least one element of each independent claim in the patents searched. Unlike a novelty or patent validity search where the focus is on the prior art disclosures, the focus of an FTO search resides in the claims which typically requires more time to analyze. For this reason, an FTO search typically costs significantly more than a novelty search.

The following two tabs change content below.
Vic Lin

Vic Lin

Startup Patent Attorney | IP Chair at Innovation Capital Law Group
We love working with startups and small businesses. I help entrepreneurs protect their intellectual property so they can reach their business goals.