What is the difference between a patentability search and a freedom-to-operate search?

What is the difference between a patentability search and a freedom-to-operate search?

There is more than one type of patent searching

The term “patent searching” frequently leads to confusion because it may refer to any one of several different types of searching. Two of the most common types of patent search are (1) patentability searches (also called novelty searches, prior art searches or invalidity searches depending on their purpose) and (2) freedom-to-operate searches (often called infringement searches). The fundamental difference between these two types of patent search is often not appreciated.

Patentability searches and freedom-to-operate (FTO) searches

In a nutshell, a patentability search aims to establish whether a patent can be granted (or should have been granted) for a concept by looking for pre-existing disclosures, which are usually, but not always, earlier patent publications, which show that the concept is known or obvious. On the other hand, a freedom-to-operate search considers whether a proposed product or process may fall within the scope of any granted, in-force patents in the specific country/countries of interest. It is often the case that new, patentable inventions improve upon or use earlier technologies that may be subject to their own existing patents.

It is important to appreciate that a patentability search does not assess freedom-to-operate. Documents uncovered in a patentability search may sometimes happen to be relevant to freedom-to-operate; sometimes there is a pre-existing in-force patent for a quite specific innovation; however, there is usually only limited overlap in the results of patentability and freedom-to-operate searches. Indeed, it is important to appreciate that even having a granted valid patent does not mean that you have freedom-to-operate. The value of a granted patent is that it enables you to control the market for products or processes within the scope of the claims; it does not confer freedom from infringing third-party patents. You might improve someone else's technology, or use it to put your invention into effect, but that doesn't mean you can ignore their patent.

Conversely, freedom-to-operate searches do not consider patentability. They have a different focus. In terms of the documents which are looked for, FTO searches will exclude patent publications that are sufficiently old (usually at least 20 years old) that any patents resulting from them must have expired, and so not be relevant to freedom-to-operate; whereas documents of any age would be relevant to patentability. Whether a patent is in force is relevant to FTO but is irrelevant to patentability. FTO searches also are also based around a product or process which is to be put into effect, and usually have to consider many elements of that product or process which might fall within the scope of patents concerning a wide range of topics. However, patentability searches look for a specific innovation.

By way of an example, imagine a person who was the first to invent a bicycle having multiple selectable gears. They carry out a patentability search and find that no one has suggested the idea before. They can readily obtain a valid granted patent and monopolise bicycles with multiple selectable gears for a period of time. However, when they come to sell a bicycle with multiple gears, they may find that they infringe an earlier patent for the whole idea of a bicycle with a gearing mechanism; or for the construction of the chain, or the pedals; or the material used to make the wheels… a freedom-to-operate search would have considered these topics but a patentability search will only have considered whether the use of multiple selectable gears was known.

Thus, patentability and freedom-to-operate are very different concepts, and so patentability and freedom-to-operate searches and opinions are very different in nature. Generally speaking, typical freedom-to-operate searches are quite a lot more expensive than typical patentability searches. Many more documents must be considered by the searcher and the documents which are found require a more detailed analysis, as well as status checks. If you want to find out whether you can might obtain a patent, you need a patentability search. The searches carried out by Patent Offices on pending applications are patentability searches; they are not freedom-to-operate searches. If you find out that a third party has a patent and you want to see if it is valid, you need to carry out a patentability search to see if the claimed idea is already known(often called an invalidity search in this context). If, however, you want to launch a product or process, then what you should instruct is a freedom-to-operate search.

A more detailed explanation of each type of search is provided in our dedicated articles on patentability searches and freedom-to-operate searches. We are happy to provide cost estimates for searches on application.

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