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December 23, 2016

Using Patent Searches to Add Commercial Value to Your Design or Invention

Bangkok Post, Corporate Counsellor Column

A patent is a type of intellectual property that can provide protection for a design, the invention of a product, or the process of making an invention. For a patent to be granted, one of the key requirements is that it must be new or novel. But beyond its novelty, a patent also has commercial value. As innovation and technology and development continue to grow in prominence in today’s modern world, individuals and companies are focusing more and more of their attention on developing and commercializing inventions and are becoming more aware of the importance of patents and their potential to add value to their business and products.

A patent application represents the forefront of design and technology. Each year, Thailand’s Department of Intellectual Property (DIP) receives an increasing number of patent applications, most of which have been filed first in another country, with the Thai application claiming priority from the original application.

A patent application submitted to the DIP is not disclosed until it has been published. Therefore, the DIP hosts a library of published patent applications which is accessible to anyone and does not require a membership fee. Likewise, other patent offices around the world, such as the European Patent Office (EPO), the Japanese Patent Office (JPO), and the United States Patent and Trademark Office (USPTO), also have databases of published patent applications for the public to use free of charge.

You can conduct a patent search within these published patent databases to learn more about the applications that have been published and the patents that have been granted. However, the scope of your search will depend on the objectives you are trying to achieve. At Tilleke & Gibbins, our clients typically ask us to conduct three very different types of patent searches:

  1. Prior Art Search

You should conduct a prior art search before drafting the specification for your new patent. The prior art search report consists of worldwide patents or published patent applications obtained from various databases online and other relevant publications, scientific journals, and other media existing in the public domain. The objective of the prior art search is to evaluate the novelty of your invention—in other words, this search confirms whether your invention is actually new and can be protected as a patent.

When conducting a prior art search, you need to have the design or know the invention in detail in order to create the key strings that are used in the search. Because this search aims to evaluate the novelty of the design or invention, you need to conduct this search worldwide. Most worldwide database search engines require membership fees, although this additional cost can be avoided by conducting patent searches in multiple databases.

Importantly, not all designs/inventions may be disclosed in databases of published patent applications, so you should also conduct searches in non-patent literature.

  1. Patent Search

The objective of a patent search is to locate relevant patents or published patent applications in a particular patent database. This is the most customized type of search, in which you can set the search on a particular applicant, the inventor’s name, or the date the patent was filed, published, or granted. Most commonly, businesses focus these searches on the name of the applicant in order to keep an eye on the activities of their competitors.

Another objective of this type of search is to understand the number of published patent applications in a certain time span or to understand which applicant has been active in that field.

It is crucial that you determine the right search strings—that is, the criteria used to focus your search—to meet your objectives. A patent agent well trained in your specific design or invention would be able to accurately help you determine the search strings.

  1. Freedom-to-Operate Search

If you want to import, manufacture, sell, or offer for sale an unpatented invention, you should conduct a freedom-to-operate (FTO) search before introducing the product into the market. This search, which needs to be conducted country by country, provides a list of designs or inventions that are protected in each country, allowing you to understand what designs or inventions are already covered by existing patents. Because patents have tremendous commercial value, many patent owners are prepared to take aggressive action against anyone who infringes their patent, so it is important to conduct an FTO search for the countries where the unpatented invention will be manufactured, sold, and imported.

The FTO search strings will be based on the unpatented invention and searched in the databases of the selected countries. Thus, the unpatented invention must be well defined. The FTO search will be conducted on patent applications that are active and will not include those whose period of protection has already lapsed. In Thailand, for example, the FTO search will be conducted on applications filed within the past 10 years for designs, 10 years for petty patents, and 20 years for invention patents. Once the FTO search has been completed, further analysis on the risk of infringing any registered patents or published patent applications would be required.

Patent searching on a well-defined subject is not difficult. In fact, you can get started by trying to conduct a patent search on your own using any of the free patent databases offered by various patent offices around the world. Reading the existing patents and published applications can provide insight for your business on how to obtain value around your innovations or make you aware of the risk of infringing a possible patent. It may even spark a new idea that will lead to a new invention that can help drive your company forward into the future.

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