Types of patent searches: Prior art and freedom to operate

Prior art search and freedom to operate are two types of patent searches with distinct objectives and are conducted at different points in the innovation process. Stéphane Roux clarifies what makes them different, why they are important and the right time to perform them. 

Often confused and yet very different, prior art and freedom-to-operate (FTO) searches play an important role in the intellectual property (IP) strategy that accompanies a new product, service or process launch.  

These two types of patent searches have distinct objectives and are conducted at different times in the innovation process. This article aims to clarify the differences between these two studies, highlight their respective importance and identify the appropriate time to conduct them.  

Two types of patent searches with distinct objectives 

Prior art search is conducted from the perspective of the inventor or potential patent applicant. Its main objective is determining whether an invention is novel and involves an inventive step, two essential criteria for obtaining a patent. This type of patent search focuses on identifying any prior disclosures (mainly patents and patent applications but also sometimes scientific articles, conferences, manuals, etc.) that could call into question the novelty or inventiveness of the invention in question.  

In comparison, FTO research is carried out from the point of view of a company or organisation wishing to market a product or use a process. Its objective is to determine whether it can do so without infringing the IP rights of third parties; in particular, patents and patent applications in force. This type of patent search focuses on active rights, therefore; i.e. patents less than 20 years old for which annual fees (annuities) have been paid and patent applications currently under examination, which could be infringed by the placing on the market or use of the technology in question. 

Two types of patent searches with specific methodologies 

The expert in charge of a prior art search will search patent databases, without limitation in time or terms of languages or countries, since novelty as assessed by patent offices is absolute novelty not considering such criteria. During the analysis, each document is considered in its entirety, i.e. the claims but especially the description and the drawings.  Accordingly, a document published in the Korean language 30 years ago can destroy novelty or inventive step.  

In contrast, in an FTO study, only patents and patent applications in the relevant countries are considered. A US document has no legal significance in Europe, therefore, so would not be considered if the scope of the study is limited to Europe. During the analysis, the expert in charge of the study focuses on the independent claims, the description and drawings only serving to interpret them correctly.   

As a result, documents identified during a prior art search can rarely be reused for an FTO study and if so, must be re-examined with this in mind. 

How to incorporate patent searches into your global IP strategy  

Conducting a prior art search is crucial for several reasons:  

• It allows you to assess the chances of obtaining a patent for a given invention.  
• It helps to identify the most innovative features of the invention, which helps guide the drafting of the patent application.  
• It can reveal existing technical solutions, potentially inspiring improvements or alternatives to the initial invention.  
• Finally, it makes it possible to avoid unnecessary expenses linked to the filing and prosecution of a patent application for a non-patentable invention.  

Conducting an FTO study is equally essential but for different reasons:  

• It allows the identification of potential counterfeiting risks before the launch of a product or the use of a process.  
• It helps make informed decisions about product development and business strategy.  
• It may reveal licensing or partnership opportunities with patent holders.  
• It helps avoid costly litigation and potential damage to the company's reputation.  

When to undertake these two types of patent searches 

While it is possible to conduct a prior art search in parallel with an FTO study, the best time to conduct each study is often different. 

The ideal time to conduct a prior art search is generally early in the innovation process, as soon as a potential invention is identified and before significant resources are invested in its development or commercialisation.  

More specifically:  

• Before filing a patent application, to assess the chances of success.  
• Before committing to significant R&D expenditure, to ensure that the innovation effort is well-directed.  
• Before soliciting external partners.  
• Periodically during the development process, to take into account new publications that could affect patentability.  
• In any case before revealing it publicly.  

In contrast, an FTO study is typically conducted at more advanced stages of a product or process's development, but ideally before its commercial launch.   

Key moments include:  

• When the main characteristics of the product or process are “frozen”.  
• Before committing to significant investments in production or marketing.  
• Before entering a new geographic market.  
• Periodically throughout the product life cycle, to account for newly published patents.  
• When considering an acquisition or merger, to assess the freedom to operate the target company's technologies.  

Prior art and FTO: two essential types of patent searches 

Although distinct in their objectives and perspectives, both types of patent searches are essential tools in the strategic management of IP. Prior art search helps determine whether an invention can be protected by a patent, while FTO studies evaluate whether a product or process can be exploited without infringing existing rights. 

To find out more about conducting these types of patent searches, including how Novagraaf can assist, speak to your Novagraaf attorney or contact us below. 

Stéphane Roux is a French & European Patent Attorney based at Novagraaf in Geneva.