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.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
Similar Articles
Relevancy Powered by MondaqAI
 
In association with
Related Topics
 
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions