Before you apply for a patent, it is important to conduct a thorough search for patent information on similar products. This initial step helps to avoid wasting time and money on applying for a patent for something that has already been invented. Searching for patent information can often be complicated, time consuming and costly, and it is always best to consult an intellectual property (IP) professional to help guide you through the process.
Should I do a search on my own?
Yes. It is definitely worth conducting your own internet and patent database search before you consult a lawyer. This can help give your lawyer an idea of how you see your invention and how you believe it compares to other competing products or services. However, patent searching can be difficult and tricky and even the best searchers can miss key pieces of prior art or background inventions.
Primarily, there are two kinds of patent search:
- Freedom to Operate – this type of search compares your product against the patent databases to look for possible infringement risks. This type of search is extremely useful for investors in businesses looking to identify risks to the business;
- Novelty Search – this type of search is much more focused and targets the question of whether your invention is new and inventive (e.g. not obvious).
Whilst conducting your patent searches is a good initial review, we strongly advise getting qualified legal assistance to complete extensive patent searching which will supply much better outcomes.
Why do I need to search?
Almost a million documents are added each year to an already huge worldwide database of more than 40 million patents. Each document includes a detailed description of an invention (almost always including drawings) and information about the inventor and applicant. Before you introduce a new product to the market you might want to ask yourself the following questions:
- Can I protect my invention with a patent?
- Does my invention infringe someone else's patent?
- Who owns similar IP in your category?
- What are my competitors doing?
Prior Art. Finding out what exists.
'Prior art' are inventions that have already been publicly disclosed. A search for 'prior art' will give you information on inventions that already exist and allow you to make an informed decision on whether your invention is unique and suitable for patent protection.
Prior art can include any published document in any country so it is important to search for your invention globally and not just in one country.
How do I search myself?
1. Choose a search tool
You can search patent databases with a number of free online tools:
- The Lens. The Lens covers patent documents from most countries around the world and is useful for both prior art and Freedom to Operate searches.
- Google Patents is probably the easiest interface to use, however, it does not include Australian patent literature. You can also use Google Scholar – scholar.google.com.au – to find literature relevant to your product or service.
- AusPat is the search tool for IP Australia's patent database and only covers Australian patent documentation.
2. Search terms
Try entering some keywords (and synonyms) that best describe what your invention is and what it does. Think of different ways your invention can be described, for example 'portable filtered coffee' could also be described as:
- Single-serve coffee filters
- Drip coffee for travel
- Pour-over coffee packs
Researching your competitors' patent applications is also useful to see what sort of language they are using. Additionally, searching patents using classification types generally provides better results than "Keyword" searching.
Australian Patent Database
The Australian Patent Database provides up-to-date information about Australian patents and is a good place to start your search. You might find a similar invention right away, avoiding the cost of a wider search. However, bear in mind, Australian patents reflect only seven percent of world patenting activity. If you need to widen your search, different databases and other relevant sources will need to be examined. If you rely solely on a single database search, your results will be limited.
Please note that patent specifications are not published for 18 months from the date of the earliest filing patent application in the patent family.
Patent information is categorised by its subject matter and can be searched worldwide using both commercial databases as well as a number of free patent databases. Using these databases effectively is a specialised skill and you may want to contact an IP professional to assist you in your search.
Patent infringement searches
Ensuring you don't infringe on someone else's patent is an important part of the process. The longer similar products have been on the market for, the less likely your product will infringe on any patents. For example, if you are making a shampoo, it is unlikely you will infringe on another's patent. Australian patents last for 20 years, and since shampoo has been on the market for more than 20 years, any patents would have already expired. On the other hand, if your invention includes cutting-edge technological advancements, you should conduct a patent infringement search. Technology that is relatively new may infringe a patent that has not yet expired.
When conducting a patent infringement search, you should consider the following:
- Is the product made up of a number of components, and if so, should you conduct a search for some or all of these?
- How will you actually interpret the claims of other patents given the many different ways an invention can be described or explained?
- How can you access the full range of patents? Abstracts of patents can be searched electronically, but are not always a reliable guide to the patent's entire contents.
- How can you ensure that you have searched all the categories under which your proposed product might be classified? For example, a software program for X-ray machines may be classified under 'data processing', 'image processing' or 'medical equipment'.
- How can you determine whether there is an outstanding patent application on your particular product? Patent applications that have been filed, but not yet published, are unsearchable.
Obtaining competitive product information
One of the main purposes of the patent system is to publish knowledge and promote progress. Searching Australian and foreign databases, and studying both pending patent applications and granted patents, can give you important information about your competitors' products and an insight into their future directions.
Determining who owns a patent
You can search the Australian patents register to determine who owns a patent. It is possible for the ownership of a patent to be transferred, and although a change of ownership is effective even if it is not officially recorded, the Patents Act 1990 provides protection for those who rely on the patents' register to determine who owns a patent.
Alder IP Patent & Trademark Lawyers
Protecting your rights regarding an invention you have worked so hard on, and navigating the complicated world of patents, can be daunting and stressful. The team at Alder IP are registered patent and trademark lawyers with many years of experience and can help you through this process. To enquire or make an appointment, please contact Alder IP on 02 9007 9916 today.