Patents can assist the growth of your business and development of technology in your industry. If your invention is patentable subject matter, it is likely eligible for patent protection. Patentable subject matter means that when compared to any earlier disclosure made anywhere in the world (referred to as ‘prior art’), your invention is both:

  • new (novel); and
  • involve an inventive or innovative step.

Patent protection will give you a monopoly (i.e. exclusive commercial rights) over exploiting your invention for a specified period. There are two main types of patent searches that you can perform before lodging an application:

  1. Patentability Search (aka novelty search), and
  2. Freedom to Operate Search.

We explain these searches and why it’s important inventors undertake these searches before going down the costly patent application path.

Novelty Search

A novelty search (patentability search or prior art search) is often the most common search performed for patent clients. The novelty search aims to determine if your product or invention is new when compared to the prior art. Prior art essentially refers to any evidence that shows your invention is already known.

Prior art does not necessarily mean the invention needs to exist in a physical or commercial way or have patent protection. It may mean that the invention has previous references (e.g. print, publication) or there has been knowledge of the event (e.g. sale of product or demo), and the invention is no longer new. This search is useful to help you or your business decide whether to pursue patent protection of your product.

To enable a patent attorney to perform the relevant search, you need to establish a key claim, feature or concept that you think is novel about your invention.

Suppose you identify three features – A, B and C. The patent attorney will search for the same or similar equivalent features in the prior art. The aim of the search is to find an earlier publication that puts all three of these key novel features together. If there are none, the combination is novel.

However, the searcher also needs to consider the inventiveness question and would look for publications containing the three features individually or in pairs. Your patent attorney would then consider whether it is reasonable to combine the claims from two or more publications (based on their field and context) to arrive at the combination A-B-C.

For example, A and C are already known products from a first product publication and B from a second. The issue then is whether it would make sense to combine the claims to arrive at the combination A-B-C. If it is, then your invention would probably lack inventive step.

The goal with a freedom to operate (FTO) search is to assess if your proposed product or service would infringe someone else’s patent rights. For example, if your product has features A, B and C, the searcher would look to match each of these with an existing patent that is in force or pending in the market that you propose to supply.

Your patent attorney will analyse the searcher’s results and provide a legal opinion on your rights. For example, if someone else has patented A only, this would be sufficient to prevent you using A in your product, even if you combined it with B and/or C.

A business creating a similar product to one already in existence should want to know whether a prior patent exists. Infringing a competitior’s patent could be costly and detrimental to your brand and product. An FTO search can assess the legal risk of infringement of existing patents and pending applications.

Conducting a worldwide FTO search should expose blocking patents in individual countries, as patent rights are country specific.

A FTO reveals the following information about a competitor’s product or patent:

  • Patent Rights ( e.g. the patent on the product);
  • Jurisdictions (e.g. which countries is the product protected in?)
  • Expiry Dates; and
  • Past or expired patents.

Non-Patent Literature Searches

Non-patent literature (NPL) searches play a major role in evaluating novelty and non-obviousness of the product. Conducting your own NPL search is a helpful first step before speaking with a patent attorney.

Useful Resources to Conduct a Search

Is a Patent Valid?

If you find a product that has a patent granted or pending and are concerned about the validity of your invention, you can also conduct a validity search. The aim is to uncover relevant prior art that the Patent Examiner did not reference or overlooked in the patent examination process.

This search is useful if you plan to monetise an existing patent. For instance, through licensing or if you intend to develop a copycat or ‘me too’ product (a product a company creates that is similar to a competitor’s product to prevent that competitor from maximising market share).

When assessing whether a patent search best suits you and your business, you should consider the following.

A patent search can prevent future wasteful spending, time and money on a potentially non-patentable invention. A good patent search will be able to find prior art and predict likely objections that the patent office would later raise during the examination. This is important to discover early, so you are aware of any issues and risks with your application.

If you want to protect your product but have limited capital, you may want to save money by sidestepping the search and securing a provisional patent instead. A provisional patent application provides one-year of protection. This can be useful in giving you an additional year to raise money for product development and/or a complete patent application to follow.

Finally, if you are interested in securing a patent for your invention to prevent others from patenting the same thing later, you may like to go straight to the application stage and save money on the search. This is a useful tactic if you believe the market is not ready for the invention but may become so later.

A patent then ensures no-one else can prevent you exploiting your invention at that later stage. For instance, the inventors of HPV vaccine obtained a provisional patent on their product in 1991 only to release and complete the development of the product in 1992. Acquiring a patent before the product was publicly discussed was an important tool to secure a monopoly over the product.

There is no requirement legal or otherwise to conduct a pre-application patent search. It’s a form of due diligence to ensure that ultimately your invention is a worthy candidate for patent protection.

A favourable outcome for a patent search does not guarantee that IP Australia will grant a patent on your product, other factors will also come into play.

Even if it happens that your invention is not patentable, you may still successfully create, market and sell your product. You will not, however, enjoy a monopoly over the product.

Protection Description
Register the appearance of your invention as a design under the Designs Act. The visual features may be as valuable as the technology that underlies a product. Novelty applies so do not wait until after product launch to act. Secure a design registration before any form of promotion, advertising or other publication takes place
Register your brand name and logo as a trade mark Building a reputation for your invention through brand recognition and marketing can also be as important as having a monopoly over the product.
Include comprehensive confidentiality and IP assignment clauses in your employment and contractors agreements

A well-drafted employment agreement can protect trade secrets behind your invention’s creation. Ensure that these agreements are in place with your staff and maintain confidentiality and assign Intellectual property developed under employment to the company.

Have a manufacturer’s agreement in place when developing your product When engaging a manufacturer to develop and create your product, make sure that you have an appropriate agreement in place to govern the relationship. Important aspects of this agreement include preventing the factory from manufacturing your product for other clients and from developing a similar product for other clients.
Draft terms and conditions to limit your liabilities Once your product is finalised, you will want to have product or sales terms and conditions. This will ultimately help you protect yourself from certain liabilities.

Going down the patent application path is not a decision your business should make lightly. A patent search will assist with indicating the patentability of your invention. In addition to these searches, your patent attorney’s professional experience can also help determine whether it’s worth pursuing a patent to protect your invention.