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
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 an infringementsearch. 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.