It is not commonly known by many inventors that there are different types of patent searches and opinions depending upon the reason for the search. Namely, there are four varieties of patent searches: 1) Novelty (patentability); 2) Freedom to Operate (FTO); 3) Non-infringement; and 4) Validity.
1. Novelty or Patentability Search
Novelty searches tend to be the most common search requested. Simply stated, this type of search and opinion is conducted to determine the likelihood of getting a patent through the United States Patent and Trademark Office (USPTO). The question asked is whether the invention is patentable through the USPTO, but does not ask if the invention infringes any other patent in real life. Typically startups or those with new inventions will request a novelty search to determine if their invention is patentable and worth the time and money to pursue. Further, the search can often yield valuable information to the inventors such as other competitors in the same space.
What steps are involved in a Novelty Search? First, the inventor must clearly identify the invention and list out all the elements and key aspects that they believe are novel. Then a comprehensive search is conducted through the USPTO database for patents and publications, Google, etc., to determine if any of the prior art found discloses the same elements in either one patent, or even in a combination of prior art, if the combination as disclosed would render the invention obvious.
2. Freedom to Operate Search
A Freedom to Operate (FTO) search, or sometimes called a Clearance search, determines whether it would be prudent to commercialize the product in view of existing in-force patents. In other words the FTO search would determine if the inventor is free to operate and commercialize the invention without the fear of getting sued for infringement. The focus of a FTO search and opinion is on the claim portion of the in-force patents found rather than the disclosure portion of the prior art as in a novelty search. For this reason, FTO searches tend to be much more complicated, time intensive, and significantly more expensive typically costing in the thousands.
What are the steps of a FTO search? Just as with a novelty search the inventor must clearly identify the invention and list out all the elements and key aspects that they believe are novel. A searcher will conduct a comprehensive search focusing only on in-force patents and published patent applications in the relevant jurisdiction. The patent attorney must then review and analyze the search results, specifically by scrutinizing the independent claims of the relevant patents, and further researching the prosecution history of those patents. The patent attorney will then assess if there is literal infringement or infringement under the Doctrine of Equivalents.
The goal of the FTO search is to hopefully determine that the inventor’s proposed invention does not infringe upon any of the patents found in the FTO search. If they do, the inventor can decide to abandon the commercialization of the proposed invention, engage in a redesign, or approach the patent holder for possible licensing negotiations.
3. Non-infringement Opinion
Similar to the FTO search, a non-infringement opinion determines if the inventor’s proposed invention will infringe a particular patent. However, non-infringement opinions are directed to a specific patent or patents that have been previously identified. For example, a non-infringement opinion should be obtained when a new product, process, or technology is created but is known to be similar to an existing patented product/process/technology, particularly in the instance when there are known competitors with patents. The steps involved for a non-infringement opinion is similar to the FTO search except that no search is conducted because the patent at issue has already been identified. And just as with the FTO opinion, the independent claims of the relevant patents must be deconstructed and analyzed and compared element by element to the proposed invention.
A significant point about conducting FTO and non-infringement opinions in advance of any allegation of infringement or commencement of a lawsuit is that if the search and opinion (preferably written opinion) is performed by a reputable licensed patent attorney, it can serve an exculpatory purpose in the event that the inventor is actually sued for patent infringement. For example, if the inventor obtains a non-infringement opinion and later in time is sued for patent infringement based upon the same patent that was analyzed in the non-infringement opinion, the court will consider the opinion and may negate a finding of enhanced damages for willful infringement which can often be “treble damages” – tripling the actual damages amount. This has been particularly significant in light of the Supreme Court’s 2016 holding in Halo Electronics, Inc. v. Pulse Electronics, Inc., et al. and Stryker Corporation, et al. v. Zimmer, Inc., et al. which lowered the burden to obtain treble damages in patent infringement cases. As such the importance to obtain such opinions cannot be overstated.
4. Validity Search
Validity searches are usually conducted in a few scenarios. It is primarily requested by a potential defendant or a defendant in an actual patent infringement lawsuit that wishes to invalidate the patentee’s patent as a defense to patent infringement. The goal is to determine whether the identified patent is valid or enforceable. In other cases, a validity search and opinion may be used prior to buying or licensing certain patents to determine the strength of those patents. For example, if it turns out the particular patent at issue is or can be invalidated, then the need to purchase or license the patent can be avoided. A validity opinion can also be used as due diligence prior to a merger or acquisition for purposes of valuing an IP portfolio of a target company.