Patent Searching – Freedom to Operate or Patentability?

Let’s suppose that you have developed a new product and you want to carry out a prior art search of existing patents. There’s often a misconception about the objectives for a search. There’s often confusion between a search based on “freedom to operate” and “patentability”.

In some cases, the main aim is to ensure that the product can be brought to market without running the risk of infringing patents held by competitors. The question of patentability – “Can I obtain a patent for my invention?” – is therefore only secondary. The main objective is to establish “freedom to operate“, i.e. can I market my product without infringing someone else’s patent.

In other cases, the objective is to determine whether the invention can be protected with a patent and thus obtain a monopoly on the exploitation of that invention. The main objective is patentability.

The difference between patentability and freedom to operate

It is often not always well understood that it can be possible to file a patent on a technical invention, but it may still not be possible to place the product containing the technical invention freely on the market. This can often happen when innovative improvements are made to a known device.

Depending on the objectives for the prior art search, the search strategy will be different:

  • Patentability objective: The search is carried out to see whether the innovative improvement is already known somewhere in the world in a patent document, a publication, or elsewhere.
  • Freedom-to-operate objective: The search will be carried out to see if the innovative improvement has already been patented. The search will focus on granted patents and pending patent applications, but will not consider publications or prior use. Expired or rejected patents will also not be considered.

To decide whether a new product can be brought to market, therefore, it is not enough to verify simply that the innovation is patentable. It is also necessary to ensure that the new product is not infringing a competing patent.

We can carry out patent searches on your behalf. Feel free to contact us for a quote and advice on what should be searched.

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