Our attorneys are all trained in formulation of searching strategies, whether for the purpose of determining state of the art, competitor landscape or freedom to operate (FTO analysis). At the option of our clients, we can perform searching in house, or contract searching out to any one of a variety of specialist searching agents in our network, either in Australia or overseas.
Novelty & state of the art searching
A search of patent documents and technical literature may be desirable to assess the patentability of an invention. Such a search may be performed before a provisional patent application (see below) is filed, or, depending on the state of knowledge of the inventor in the relevant area of technology, it may be deferred until consideration is given to applying for broad patent protection.
Searching is not an exact science as a consideration of all documents published anywhere in the world before the date of a patent application is physically impossible. However, a basic search using certain databases can provide a good guide to patentability. No search, no matter how perfectly performed, can be considered binding as all of the information searched is provided by government departments and other bodies that provide no guarantees as to the accuracy of the information or the way in which it is classified.
Before proceeding with protecting an invention internationally, we recommend that at least a basic search be conducted because of the cost of international patent protection. With many inventions, it is good practice to have us carry out a basic database search even before filing a provisional patent application.
Infringement & FTO searching
We can conduct periodic searching of the patent databases to monitor the filing activities of your key competitors. This can be performed in several jurisdictions including Australia and New Zealand.
Prior to launching a product in the Australian market it can be prudent to conduct a Freedom to Operate search, also known as an infringement search, of the Australian patent register. We can perform patent infringement searching based on subject matter IPC, Derwent codes, key words and advise on issues following that search, including validity infringement, and options for design around of patent rights.
In addition to watching specific competitors, we are able to monitor activity in a particular technical field by maintaining a watch on a particular field of activity or classification. A search of this type is used to keep abreast of new products entering a market segment or new competitors which may be newly entering the Australian market.