Difference Between Prior Art Search, Invalidation Search And FTO Search

The world of patents can be complex, especially when it comes to determining the patentability of an invention and your freedom to operate in the market. Three crucial searches – prior art, invalidation, and freedom to operate (FTO) – play a vital role in navigating this landscape. Let’s delve into the differences between these searches in the context of the Philippines and the United States (USA).

Prior Art Search

Imagine a world where every invention could be patented. Chaos would ensue! A prior art search acts as the first line of defense, ensuring your invention meets the novelty and non-obviousness requirements for patentability. This search involves scouring existing patents, scientific publications, and other publicly available information to identify anything similar to your invention.

Scope and Considerations

• Both the Philippines and the USA require a thorough prior art search before filing a patent application.
• The Philippine Intellectual Property Office (IPOPHL) and the United States Patent and Trademark Office (USPTO) conduct their own searches during the examination process. However, conducting your own search beforehand is highly advisable.
• A comprehensive prior art search helps identify potential pitfalls and allows you to refine your invention to enhance its patentability.

Key Differences

The Philippines and the USA have some subtle differences in their prior art search considerations:

• Grace Period: The Philippines offers a one-year grace period, meaning disclosures made within that year before filing won’t be considered prior art. The USA has no such grace period.
• Knowledge Bars: Both countries consider knowledge of the invention by the applicant or someone they derived knowledge from as prior art. However, the USA has a more stringent approach, including knowledge accessible to a person skilled in the art.

Invalidation Search: Challenging Granted Patents

Not all granted patents are invincible. An invalidation search, also known as a validity search, investigates whether a granted patent can be challenged based on the existence of undisclosed prior art or other legal grounds. This can be crucial for companies seeking to develop products that might infringe upon existing patents.

The Endgame:

• Invalidation searches are typically conducted during patent litigation or for defensive purposes to weaken a competitor’s patent position.
• A successful invalidation search can render a patent unenforceable, allowing others to freely use the invention.

Nuances in the Philippines and USA

The process for challenging patents differs slightly between the two countries:

• Philippines: The Philippines has a post-grant opposition system where a third party can file an opposition within six months of a patent grant. Alternatively, invalidation can be sought through cancellation proceedings.
• USA: The USA offers pre-issuance opposition (called interference proceedings) and post-grant challenges through various mechanisms like inter partes review (IPR) and post-grant review (PGR).

Freedom to Operate Search

An FTO search assesses your freedom to develop, manufacture, sell, or use your invention without infringing upon existing patents. This proactive approach helps avoid costly infringement lawsuits and potential product recalls.

Peace of Mind

• FTO searches are typically conducted before commercializing a product or investing heavily in its development.
• A well-conducted FTO search provides valuable insights into potential infringement risks and allows you to develop strategies to mitigate them, such as design-arounds or licensing agreements.

Considerations in the Philippines and USA

While the core purpose of FTO searches remains similar, there are some practical differences:

• Cost and Complexity: FTO searches in the USA tend to be more expensive and complex due to the larger patent volume and potential for design patents to be relevant.
• Legal Landscape: The Philippines has a smaller patent landscape, potentially making FTO searches less resource-intensive. However, staying updated on relevant case law is crucial in both countries.

Conclusion: Choosing the Right Search for Your Needs

Prior art, invalidation, and FTO searches are essential tools for navigating the patent landscape in both the Philippines and the USA. Understanding the purpose and nuances of each search empowers you to make informed decisions about your intellectual property strategy. By employing the right search at the right time, you can increase your chances of successfully obtaining a patent, avoid infringement risks, and operate with confidence in the marketplace.

Additional Considerations:

• It’s important to consult with a qualified patent attorney in the Philippines or the USA to determine the most appropriate search strategy for your specific needs.
• Patent laws and procedures can change over time, so staying updated on the latest developments is crucial.

By strategically utilizing these searches, you can unlock the full potential of your inventions and thrive in the competitive world of intellectual property.