DOBRMAN

What is a patent search?

A patent search is a review of existing patents, published patent applications, and other publicly available information — known collectively as prior art — to assess whether an invention is novel and non-obvious. A patent search is typically conducted before filing a patent application, but patent searches are also used to evaluate the validity of an existing patent, assess infringement risk, or map the competitive landscape. Different types of patent searches serve different purposes, and understanding which type of patent search is appropriate depends on the specific question being answered.

When you should consider a patent search

Before filing a patent application. A patentability search is the most common type of patent search and is typically conducted before a patent application is filed. A patentability patent search identifies prior art that could prevent a patent from being granted or that could narrow the scope of the claims available to the applicant. Conducting a patent search before filing allows the applicant and their counsel to assess the strength of the application, refine the claims, and make an informed decision about whether to proceed.

Before investing in development. A patent search conducted early in the development process can reveal whether a technology area is crowded with existing patents held by competitors. Identifying a dense patent landscape through a patent search before significant resources are committed can inform development strategy, product design, and decisions about whether to seek patent protection at all.

When assessing the validity of a competitor’s patent. An invalidity patent search, also called a validity search, involves searching for prior art that predates a granted patent and could be used to challenge its validity. If a competitor is asserting a patent against your business, an invalidity patent search can identify whether the patent should never have been granted, which may be relevant to litigation strategy or licensing negotiations.

Before entering licensing negotiations. A patent search can help inform the negotiation of a patent licence. Understanding the prior art landscape and the strength of the patents being licenced — or those your business holds — can affect the terms of a licence, including the royalty rate and the scope of rights granted. A patent search provides the factual foundation for these conversations.

When conducting IP due diligence. A patent search is a standard component of IP due diligence in mergers, acquisitions, and investment transactions. A patent search conducted as part of due diligence can reveal whether a target company’s patents are likely to withstand validity challenges and whether the target’s products are exposed to third-party patent claims.

Relevant laws and regulations

Patent Act, RSC 1985, c P-4. Canada’s primary federal statute governing patent rights. The Patent Act establishes the requirements for patentability — novelty, usefulness, and non-obviousness — that a patent search is designed to assess. The Patent Act also governs the rights of patent holders to exclude others from making, using, or selling a patented invention, and sets out the remedies available for infringement.

Common legal issues

Prior art from non-patent sources. A patent search is not limited to existing patents and published patent applications. Prior art can include academic publications, product manuals, conference papers, websites, and any other publicly available disclosure that predates the invention. A patent search that covers only patent databases may miss relevant prior art from other sources.

Publication deadlines and grace periods. Under the Patent Act, Canada provides inventors with a twelve-month grace period from the date of the inventor’s own public disclosure to file a patent application. A patent search conducted after a public disclosure of the invention should account for this grace period and whether third-party disclosures made before the filing date could constitute prior art that falls outside its protection.

International prior art. A patent search should typically account for international prior art. Prior art published anywhere in the world is relevant to Canadian patentability under the Patent Act. A patent search limited to Canadian patents and publications may miss significant prior art from US, European, or other international patent offices and publications, producing an incomplete picture of the patent landscape.

Distinguishing a patent search from a freedom to operate analysis. A patent search and a freedom to operate analysis are related but distinct exercises. A patent search assesses whether an invention is patentable in light of prior art. A freedom to operate analysis assesses whether a product or process can be commercialized without infringing existing patent claims. Both involve searching patent databases, but the legal questions — and the analysis applied — are different. Conflating these two types of patent searches can result in relying on an opinion that does not address the actual question at hand.

Frequently asked questions

Is a patent search required before filing a patent application? A patent search is not legally required before filing a patent application in Canada, but it is commonly conducted as a practical matter. A patent search before filing allows applicants to assess the likelihood of success, tailor their claims to distinguish over the prior art, and make informed decisions about whether the investment in patent protection is warranted.

Can I conduct a patent search myself? Patent databases — including the Canadian Patent Database maintained by the Canadian Intellectual Property Office — are publicly accessible and can be searched without professional assistance. However, a thorough patent search requires familiarity with patent classification systems, claim language, and search methodology. A patent search conducted by a patent agent or lawyer is more likely to identify relevant prior art and provide a meaningful legal assessment of the results.

How current are the results of a patent search? A patent search reflects the state of the prior art at the time the search is conducted. Patent applications are typically published eighteen months after their filing date, meaning recently filed applications may not yet appear in search results. A patent search conducted close to an application’s filing date may miss pending applications that are later published and could constitute prior art.

Does a patent search cover international patents? A patent search can be scoped to cover international patent databases, including those of the European Patent Office, the United States Patent and Trademark Office, and the World Intellectual Property Organization’s PCT database. The scope of a patent search should be matched to the markets and jurisdictions relevant to the invention and the question being addressed.