Patentability Searches versus “Right to Use” Searches

Clients often ask us to perform patentability searches to determine whether it’s worth seeking a patent for an invention. The focus of a patentability search is to determine if an invention is novel, i.e., whether all of its features have been disclosed in a single prior art reference.

The purpose of a patentability search is not to determine whether an invention can be practiced without infringing any pre-existing patents. In addition, an invention may be patentable yet violate an earlier, broader patent if the invention is practiced. In order to determine whether an invention can be practiced without infringing any earlier patents, a “right to use” search (sometimes called a “freedom to operate” search) is required. Although there will often be some overlap in the results of a patentability search and a freedom to operate search, the focus of the searches is different.

Whether an invention is patentable will depend on the entire disclosure of prior art references (e.g., patents, published patent applications, journal articles, etc.) from anywhere in the world. By “entire disclosure,” we mean that anything in the specification, drawings, and claims will be potentially relevant to patentability. It does not matter if a patent has expired or if a patent application was never allowed as a patent. Their respective contents are still relevant to patentability.

In contrast, a right to use search focuses on the claims of unexpired patents in the countries in which a proposed product may be made, used, sold, imported, or offered for sale. A patent is infringed when at least one claim “reads on” or “covers” a contemplated product. Expired patents cannot be infringed, and if the product has no nexus to a particular country, it cannot infringe that country’s patents. Right to use searches can be tricky because whether a particular claim of an existing patent is infringed, will depend not only on the “new” features of a product (i.e., the features that may be patentable), but also on other features that may not be new. In many cases, a proposed product has not been completely designed even though its “new” features are known. In that case, the right to use study can help guide the design of the product to avoid infringement.

If you develop a potentially patentable product but have no plans to make it or have someone else make it, a right to use study is unnecessary. However, if you do have such plans, you should consider conducting a right to use study to assess the infringement risk.