Patent Search & Opinions

Conducting a patent search can give innovators an indication of whether an invention is of sufficient novelty to justify allocating the resources necessary to acquire patent rights. Additionally, the results of the search could broadly indicate the possibility of obtaining a patent.

How do you determine if your invention is sufficiently novel?

A prior art search for published IP materials can start with a dive into various public databases: Individual patent offices like the United States Patent and Trademark Office (USPTO) and European Patent Office (EPO) maintain portals for basic searches, as does the World Intellectual Property Organization (WIPO).

Free patent search options such as these are useful if you are looking for a specific invention or conducting general-purpose research. In contrast, comprehensive patent searches require paying a fee to a patent office or working with a specialist company like Dennemeyer, a full-service provider for global IP management.

Patent opinions matter because they bring nuance and a professional perspective to the issue of what constitutes prior art and what puts a provider / supplier / seller / distributor at risk of patent infringement.

An effective patent search can tell you if your invention is identical or similar to existing or expired IP rights. But "similar" is a relative term, to put it mildly. Most inventors trying to assess how similar their innovation is to the prior work of another party will have a difficult time doing so.

A patent attorney (or similar specialist) will help solve this problem. They can examine a patent draft and assess its relationship to prior art to ascertain whether an examining office is liable to reject it. In addition, the patent attorneys at Dennemeyer can minimize the risk of a marketed product interfering with the IP rights of others through a freedom-to-operate search and analysis. An informed patent opinion brings clarity to complex data.

Novelty is among the key criteria for patentability but it is not the only factor, and patent offices may reject applications even if patent searches have shown them to be entirely new.

Thus, in addition to being novel, a patent must also:

• Be non-obvious (or involve an inventive step, depending on the jurisdiction). An invention meets this criterion if a patent examiner judges that it would not readily occur to "a person skilled in the art" — i.e., someone with reasonable, up-to-date knowledge of the subject area to which the invention relates.
• Have utility (or industrial applicability, depending on the jurisdiction). The invention's patent application must argue that it can deliver some real-world benefit (even if it has yet to be built or tested). Relatedly, under the European Patent Convention, an invention must be capable of manufacture or use in any industry. Both of these provisions forbid "hypothetical" inventions.

This issue only stresses the importance of expert patent opinions. Those providing them will assess the invention based on all patentability factors relevant to a particular jurisdiction.

If searches and opinions deem your invention non-novel or otherwise unpatentable, there are alternatives you can pursue. These each have their own strengths and limitations.

Can trade secrets and utility models be considered alternatives to patent protection?

Trade secrets are not sui generis IP rights. Unlike patented IP, their details are never meant to be public. Trade secrets are most useful for processes or technical specifications that offer a business a competitive advantage only if kept concealed. If these are disclosed at all, it is in binding contracts between parties — usually confidentiality or non-disclosure agreements (NDAs).

Utility models (sometimes called short-term patents) protect almost the same subject matter as patents, with the exception of processes (depending on the jurisdiction). However, utility models do not last as long: usually five to 10 years, as opposed to patents' 20-year maximum term. Receiving registration for a utility model is easier and cheaper than obtaining a patent. As such, they may be appropriate for inventions of lower commercial priority.

However, both options have notable shortcomings.

• If trade secrets are revealed due to theft, corporate espionage or a breached contract, the disclosure alone may be enough to cause significant financial damage. Though you may have recourse to file suit for breach of an NDA, the legal proceedings that follow are inherently unpredictable.
• Utility models, in addition to their limited terms, offer weaker protection than patents. They are also not available in numerous jurisdictions, including the United States, the United Kingdom and more than half of the EU.

Therefore, even though getting a grant requires expert advice and a lot of documentation, a patent is often the best IP protection you can receive for your invention.

Dennemeyer's prior art and freedom-to-operate searches encompass all relevant material to ensure your inventions have the best chances for patent protection. In addition, our freedom-to-operate searches and analyses can help avoid the risk of marketing a product that infringes third-party rights. We also provide opinions based on meticulous analyses, which are, in turn, informed by exhaustive legal knowledge.

Additionally, Octimine, Dennemeyer's AI-driven patent search and analytics platform, provides users with unparalleled insights into technology landscapes. Our software enables more thorough and effective searches than ever before and helps you stay one step ahead of the competition.