What exactly do I want to know?

LUPA CON HUELLA
The search for documents also satisfies the law that reads: “nobody is perfect!” as established by Jack Lemmon’s fiancé in the movie “Some like it hot”. Just because of this, and because they cost money and time, searches demand most attention and we must perform them as well as possible.

We previously wrote about the importance of background searches before the filing of a patent application. But there is a lot more. One of the next essential chapters is to exactly know:

– what do we have to search for, and

– what information do we expect to retrieve from our search

It seems obvious to know, an insult to the intelligence to insinuate that we do not know what we have to look for, but it is not.

Even though the searches to find state of the art previous to an invention are the most common ones, there are other searches, and the differences among them are as follow:

– we want to know whether an invention – presumably new – could be patented, i.e., the most common search: we must then search for patent and non-patent literature, or in other words scientific / technical literature from any source, such as articles, catalogs, thesis, conferences, congress abstracts, shops, etc. The relevant aspect is to be aware that the search must be completely general with regard to the kind of documents and languages, that the legal status of a document does not play any role, and that the only time limit we can use is the very day on which we are performing the search (that is, no time limit). This search is called a “novelty search”.

– we want to know whether an invention, already protected by a patent in force, or a patent application under prosecution, is new: we must search with the same criteria as in the previous case, with the difference that the date until which we have to retrospectively search is the priority date of the patent, or patent application (“priority date” is mentioned in the section entitled “patents” on this web page). If it does not have a priority date, the time limit would be the application date. An essential aspect in this case is to have in mind that some territories – such as the United States – have a grace period for publications coming from the inventor. Therefore, a document disclosing the invention and published during that grace period does not affect the patent or patent application we are investigating. This is called a “validity search”.

– we want to know whether we can manufacture, sell, freely use a product, i.e, whether we will infringe a third person’s right: we must search for patents, utility models, or even industrial designs, but it is not necessary to search any other type of documents as scientific literature. Furthermores, it is essential to bear in mind that the search only has to be implemented for the territory in which we intend to carry out our activity. Given the strictly territorial nature of the industrial property registers, a patent of a competitor, in France for example, will not prevent us from performing our activity in Germany. The second essential issue of this search is that the documents we find, must correspond to industrial property rights in force. In other words, a patent exactly disclosing the same product we intend to put in the market will not prevent us from doing it, if this patent is lapsed because of failure to pay the annuities or maintenance fees. We must not forget that this search will be pointless if we do not investigate the legal status of the retrieved documents, as opposite to the previous cases. This search is called in the patent jargon a “freedom to operate (FTO)”, o “clearance search”.

– we want to get an idea about the last novelties on a specific technology: in this case the search will be as in the first one above, but restricting it to the most  recent time period, that may be upon our interest, the last five years, one year or the last month. We reduce in this way the number of documents we are going to retrieve. It also seems appropriate in certain cases to search documents not only using key words addressing the product of our interest, but also addressing corporations, companies or individuals. This will show us what our competitors – who are the product experts, aside from us of course – are busy with. This is a “technological survey” when it is performed on a regular basis. It can be done by an expert, or even by the Spanish Patent Office (SPO) (or other entities, we shall deal with in the next article). Such a search is a “state-of-the-art search”.

The SPO offers through its web page valuable information on searches: how to carry them out, type of searches, how to place an order for a search to the SPO, sources of documents used by the Office, (EPODOC; INVENES; WPI), recommendations and fares. The searches you can order to the SPO match more or less the ones in this article.  They are just called as follows: patent technological report (ITP) which would correspond to the two first cases above, “state-of-the-art search” corresponding to the fourth case herein, and “retrospective searches” – national /or international patents – that could correspond to the third case hereinabove, but without the limitation to a specific territory.

In the next article, we intend to deal with the databases offer. For now, we only will tell you that on the FPO web site  http://community.freepatentsonline.com/wiki/patent-search-types-and-methodologies there is beautiful and ordered information on the kind of searches. We warned you at the beginning of this article that knowing what we are to search for is not a small matter.

                                               Seni Cueto

 

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