Canada: The Effective Use Of Patent Searches And Opinions

Various patent search and opinion services are available to assist individuals and companies with identifying opportunities to add value to their businesses through acquiring or enforcing patent assets, minimizing the risk of attracting liability for patent infringement, and gathering intelligence on the patent rights of their competitors and potential acquisition targets.

To enable the effective use of patent searches and opinions, this paper provides an overview of each search and opinion service. More particularly, the overview includes discussion of what each search or opinion is and its value proposition, when it is best used, how it is carried out, what information is needed to obtain it and the factors affecting its cost.

Types of Patent Searches and Opinions

Patent searches and opinions may be classified into four categories: 1) those relating to the pursuit of patent rights; 2) those evaluating the risk of patent infringement liability from commercializing a product or service; 3) those directed at enforcing patent rights; and 4) those focused on obtaining intelligence about the patent portfolios of others, such as competitors or potential acquisition targets.

1) Pursuit of Patent Rights

A. State of the Art Search

A state of the art search may be used early in the process of deciding new technologies to research and develop.

A state of the art search may reveal that some areas within a particular technology have high patenting activity while other areas have low or no patenting activity. The search will also identify which technologies a company's competitors have been applying for patents on. This information allows for better evaluation of the potential commercial value of research and development projects before they are undertaken—as, in most cases, broader patent protection may be obtained in areas with less patenting activity than those with more.

A state of the art search typically involves a search of the U.S. Patent Database for recent patent documents relevant to a particular technology. It optionally, or alternatively, may include searches of other national patent databases, such as the Canadian Patent Database.

All that is required to proceed with a state of the art search is a description of the technology or technological field to be searched. Care should be taken to frame the technology broadly enough such that the most relevant patent documents will be uncovered, but not so broad as to result in an unmanageably high number of relevant documents.

The cost of a state of the art search varies with the breadth and depth of the technology or technological field to be searched and increases with the amount of post-search analysis, if any, of the search results desired.

B. Patentability Search and Opinion

A patentability search is best conducted as soon as an inventor can describe how to make and use the proposed invention, i.e. as early as possible. However, if the inventor has a high confidence that an invention is new and inventive, he or she may decide proceed to have a patent application drafted without conducting a patentability search.

If the novelty and inventiveness of the proposed invention is unknown, a patentability search and opinion allows an early assessment of what, if any, scope of patent protection may be obtained. If little or no patent protection may be obtained, the more significant cost of having a patent application prepared and filed may be avoided and other projects may be pursued.

A patentability search usually involves a search of the U.S. Patent Database for relevant patent documents, and optionally a search of other national patent databases, such as the Canadian Patent Database, or non-patent information sources, such as the World Wide Web. A patentability opinion involves comparing the most similar patent documents uncovered with the proposed invention to determine whether the proposed invention is new and inventive.

To carry out a patentability search, a description of the proposed product or service, with drawings if applicable, as well as a description of the problem the product or service addresses and its various advantages is required. The potential inventor may also need to be available by phone or email to respond to questions about the design.

The cost of a patentability search varies with the comprehensiveness desired of the search. The more time spent on the search the higher the level of confidence will be that all or nearly all of the relevant references have been uncovered. The cost of a patentability opinion depends on the number of relevant patent documents uncovered by the search, the complexity of the technology involved and whether a full written opinion is required. It is possible to obtain only a patent search, where no opinion on the references is provided, or only a patentability opinion where the relevant patent references are supplied and an opinion on those references is provided.

2) Evaluating the Risk of Patent Infringement Liability of Commercializing a Product or Service

A. Clearance Search and Opinion

Upon completion of the design of a product or service where there is a desire to bring the product or service to market, it is often advisable to conduct a patent clearance search.

The purpose of a clearance search is to inform of the risk of liability for patent infringement if a product or service is commercialized. Where there is a significant enough risk of infringement, it may be advisable to attempt to redesign certain features of the product or service so as to avoid infringing third party patents. Alternatively, a licence of such patent(s) may be sought or an invalidity search and opinion may be obtained (detailed further below) for each of such patents.

A clearance search is a search of patents in force in the countries where you intend to make, use or sell the product or perform or sell the service. A clearance opinion assesses the degree of risk of infringing each patent determined to be relevant by the search and may also suggest design changes to avoid or reduce the risk of infringement if the proposed design may infringe one or more patents. A clearance search may also optionally include a search of relevant pending patent applications in those jurisdictions. Caution is needed in the review of such references as the pending claims are likely to be broader in scope than any claims that may ultimately issue from those applications.

To conduct a clearance search, a detailed description of the proposed design or service, with drawings if applicable, as well as a list of countries where the product will be made, used or sold or where the service will be performed or sold is required. An appropriate technical person knowledgeable about the particular product or service at issue may also need to be available by phone or email to respond to questions about the product or service.

The cost of a clearance search depends on the number of jurisdictions to be searched and the scope of the search, which tends to increase with the number of components in a product or steps in a service. For example, if a product design incorporates a series of components which may also be individually patented, this will increase the total cost of the search.

A clearance opinion for a particular country or jurisdiction needs to be provided by a professional licensed to practice in that particular country or jurisdiction. Bennett Jones maintains relationships with foreign patent professionals around the world and regularly arranges for foreign clearance opinions to be carried out for its clients.

The cost of a clearance opinion for each country or jurisdiction will depend on the number of relevant search results, how similar the patents are to the proposed design and the complexity of the technologies involved. Typically, only the independent claims (as opposed to all claims) of a patent will need to be considered. Where a clearance opinion is needed for several countries or jurisdictions, an initial Canadian opinion may be provided to foreign professionals in whole or in part, if desired, to assist with the foreign associate's understanding of the product or service and/or particular patent references.

As is the case with a patentability search and opinion, it is possible to obtain only a clearance search, with no opinion on the uncovered patent references, or only a clearance opinion, where the particular references are supplied and only an opinion on them is provided.

B. Non-Infringement Opinion

A non-infringement opinion is similar to a clearance opinion but typically concerns only a single patent and is usually sought after the product or service has been commercialized. A non-infringement opinion is useful where a cease and desist letter has been received from a competitor or a highly relevant patent to an existing product or service has been uncovered through another means.

A non-infringement opinion provides an independent assessment of the risk of liability for patent infringement for past or future activities which is essential to determining what position to take towards anticipated or threatened litigation.

A non-infringement opinion involves the review of the specific patent to be considered and a comparison of the claims of that patent with the product or service at issue according to the applicable laws of claim construction and infringement in that jurisdiction. A non-infringement opinion may also identify potential design changes to avoid or reduce the risk of future or ongoing infringement.

For a non-infringement opinion to be conducted, an identification of the patent and a detailed description of the design or service, with photographs or drawings if applicable, are required. An appropriate technical person knowledgeable about the particular product or service at issue may also need to be available by phone or email to respond to questions about the product or service.

The cost of the opinion depends on the complexity of the technology involved and the number of claims to be considered. Typically, only the independent claims (as opposed to all claims) of a patent will need to be considered.

A non-infringement opinion for a foreign country or jurisdiction needs to be provided by a patent professional licensed to practice in that particular country or jurisdiction. Bennett Jones regularly arranges for foreign non-infringement opinions to be carried out by its foreign associates for its clients.

C. Invalidity Search and Opinion

An invalidity search and opinion may be advisable when a company believes it may infringe an issued patent of third party and wishes to assess its chances of invalidating the patent in litigation or, alternatively, a patent rights holder believes a third party is infringing its patent (see infringement opinion below) and wants a clearer assessment of the chance that the patent might be found invalid in litigation.

Where a patent is infringed, liability for patent infringement can be avoided if the patent is found invalid. Before enforcing a patent in the courts or responding to an allegation of infringement, an invalidity search and opinion may be obtained to provide a better assessment of the patent's validity, which will better inform the patent rights holder's overall chances for success in the litigation. In Canada, patents are presumed to be valid in the absence of evidence to the contrary. Historically, Canadian patents are upheld as valid at trial about 75% of the time.

An invalidity search involves a search of patent documents and, optionally, non-patent documents which may render the claims of the patent at issue invalid as lacking novelty and/or inventiveness. An invalidity opinion typically involves an analysis of the results of the validity search against the claims of the patent concerned, as well as an analysis of other potential technical attacks on the patent. On request, an invalidity opinion may be limited to particular grounds of attack.

To obtain an invalidity search and opinion, an identification of the patent and instructions as to the comprehensiveness of the search, are required.

The cost of an invalidity search can vary greatly depending on the comprehensiveness of the search. In some cases, a knockout reference completely anticipating the claims of the patent is uncovered early in the search process, thereby avoiding substantial search costs. In other cases, such as where the patent has been asserted in litigation, it may be worthwhile to spend a great deal of time searching for the best prior art references in view of the monetary amount at risk, even though a knockout reference may never be found.

The cost of an invalidity opinion depends on the complexity of the technology involved, the number of relevant prior art documents uncovered, the number of claims in the patent and the range of technical attacks to be considered.

As is the case with other opinions, an invalidity opinion for a particular country or jurisdiction needs to be provided by a patent professional licensed to practice in that particular country or jurisdiction. Bennett Jones regularly arranges for foreign invalidity opinions to be carried out by its foreign associates for its clients. Where an invalidity opinion is needed for several countries or jurisdictions, an initial Canadian opinion may be provided to foreign professionals in whole or in part, if desired, to assist with the foreign associate's understanding of the technology of the patent and particular prior art references.

3) Patent Enforcement

A. Infringement Opinion

An infringement opinion is useful where it is believed that a third party may be making, using or selling a product or performing or selling a service which may infringe one or more of a patent rights holder's issued patents.

Infringers may be sued for damages or profits and enjoined from further infringing activity for the life of the patent. While patent litigation is costly to take to and through trial, most patent disputes are settled before or during litigation. Successful settlements for the patent rights holder typically include a fully paid-up or royalty-bearing licence for future sales under the patent as well as an amount for past infringement.

An infringement opinion is carried out through a review of the specific patent(s) to be considered and a comparison of the claims of that patent with the product or service at issue.

To obtain an infringement opinion, an identification of the patent(s) and a sufficiently-detailed description of the potentially infringing product or service, with photographs or drawings if applicable, are needed.

The cost of the opinion will depend on the complexity of the technology involved and the number of claims to be considered. Typically, only independent claims of a patent are considered in an infringement opinion in order to moderate cost.

An infringement opinion for a particular country or jurisdiction needs to be provided by a patent professional licensed to practice in that particular country or jurisdiction. Bennett Jones regularly arranges for foreign infringement opinions to be carried out by its foreign associates for its clients.

4) Intelligence Searches on the Patent Portfolios of Competitors or Acquisition Targets

A. Company-Specific Searches

Company-specific searches may be carried out to identify the issued and in-force patents and pending patent applications of a particular competitor or acquisition target.

In some cases, this may reveal unexpected technologies that a competitor holds patents and applications on, signaling either products and services in development or patents which the competitor is not practicing and may be open to selling or licensing. Keeping apprised of competitors' patent portfolios may be a useful window into a competitor's future product and service offerings as well as its technological direction and strategy.

A company-specific search is carried out by performing patent searches on the company name in the countries or jurisdictions requested. Summaries or further analysis of the issued patents and pending applications may be carried out on request.

To obtain a company-specific search, an identification of the legal name of the company and the countries or jurisdictions of interest is needed.

The cost of the search will depend on the number of countries and jurisdictions to be searched and the extent of the company's patent portfolio. In most instances, the cost of a company-specific patent search, provided that no additional summary or analysis is required, is quite modest.

Conclusion

As set out above, there are many types of patent searches and opinions which allow individuals and companies to stay well informed of both opportunities for patent acquisition and enforcement and risks relating to commercializing certain products and services. The above discussion is intended to provide a general overview of the patent search and opinion services that Bennett Jones' intellectual property professionals provide. Specific advice and recommendations for particular circumstances may be obtained through speaking with one of Bennett Jones' many intellectual property professionals

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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