An inventor or assignee of an invention should understand the role of patent searching in deciding whether to seek patent protection. It is not necessary for an inventor to perform a patent search prior to seeking patent protection. However, a patent search can provide an inventor with a certain degree of confidence that patent will issue with a reasonable scope of patent protection.

An inventor or assignee should understand that not all types of patent searches are the same. There are four basic types:
  • Collection or state-of-the-art searches
  • Patentability searches
  • Infringement searches
  • Right-to-use searches
Acollection searchis usually performed at the beginning of a project. It targets patents pertaining to a specific subject matter. A collection search can be useful prior to the development of an invention disclosure. Collection searches can be limited in their effectiveness because not all inventions are patented. Also, not all patents disclose something of commercial significance.

Patentabilitysearches are usually performed before deciding to file an application. It is not necessary to conduct a search because the examiner will perform one for you. However, it is highly recommended because a search can be useful in drafting the patent claims. A patentability search provides the foundation for a patentability opinion, which can be used to decide whether to invest in the preparation of a patent application.

Another type of search is aninfringementsearch. It is usually performed when a company is planning to introduce a new product onto the market and is concerned that the product may infringe an existing patent. Infringement searches target unexpired patents. These types of searches focus on the claims of those patents. Infringement searches usually take longer than a patentability search.

The fourth search type is aright-to-usesearch. These searches may be validity searches or infringement searches or a combination of both. Validity searches focus on patents and non-patent literature that were published and/or available prior to the critical date that can be used to invalidate patent.