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Prior art and freedom to operate searches: why are they so important?

May 6th, 2022
Before registering a trademark or patent, it is very important to ensure that your entrepreneurial idea is original, in particular by checking whether your invention is actually new.

Nowadays, intellectual property rights are key corporate assets. Yet, being intangible rights, their value is often wrongly underestimated by entrepreneurs.

When well managed and protected, these rights can significantly contribute to the economic growth of any business, large or small. Just think of High-Tech giants, whose brands are valued several billion dollars and their worth is continuously increasing.

Therefore, one of the mistakes to avoid when starting up any business is not to invest money in the registration and subsequent protection of intellectual property rights such as trademarks, industrial designs, patents and copyright.

It is clear, though, that – especially for entrepreneurs who are just starting out in the IP world – navigating through such rights can be very complex and confusing. This is why it is always advisable to rely on the expert hands of professionals who can guide and help in investing the resources of a company in the wisest and most appropriate way possible, thus avoiding wasting money.

How can you tell whether your idea is original?

Before registering a trademark or patent, it is very important to ensure that your idea is original, in particular by checking whether your invention is new and involves an inventive step, i.e. whether a prior patent or patent application identical or similar to yours exists, thus avoiding incurring considerable financial risks or investing time in scientific or technical research that has already been patented.

One of the safest ways to avoid these risks is to carry out a prior art search.

What is a prior art search and why should it be carried out?

First, it should be pointed out that, in an increasingly globalised world, companies, especially innovation-driven ones, protect their inventions even before they actually reach the market, in order to avoid losing the so-called novelty requirement, lacking which an invention would no longer be patentable. For this very reason, such inventions remain 'unknown' to most and it is extremely difficult to acknowledge their existence other than by browsing through patent databases developed for the purpose.

In fact, it may happen that an inventor thinks his idea is original and therefore patentable because there is no other identical product on the market - but this is often not the case.

Therefore, it is always advisable to carry out a prior art search.

But what does prior art mean?

Prior art includes anything that has been made public by means of a written or verbal description or any other means of disclosure (internet, presentation for educational purposes, etc.) prior to the filing date of a patent application.

Prior art can be found by means of a procedure called patent prior art search, which makes it possible to establish whether your invention meets the essential requirement of novelty, involves an inventive step, is capable of industrial application and, therefore, whether you should continue investing in it.

This can be done by using international websites that contain huge databases storing millions of records of patents and patent claims from all over the world.

The most important databases, which are all-embracing and freely accessible, are Espacenet, made available by EPO (European Patent Office) and Patentscope, accessible from the WIPO (World Intellectual Property Organisation) website. Both allow access to European and international patent applications from the day of their publication, as well as to documents pertaining to patent applications filed with foreign national and regional offices. These databases can be searched in many languages, using various criteria such as keywords relating to the subject matter of the invention or the names of the holders of industrial property rights.

However, it must be said that, especially for the inexperienced, patent prior art searches are rather complex. Firstly, because when you enter keywords, you are not always sure to find all the inventions relating to that field of application (if, for example, you use the keyword 'bottle', others may have patented something very similar using a different word such as 'jar') and, secondly, because it can often be very difficult for a lay person to understand the results of such searches.

Freedom to operate: what is it and what does it protect you from?

A prior art search alone does not always provide certainty as regards the “freedom to operate” (FTO).

But, what is freedom to operate and why is it so important to assess it before investing money in the research and development of a new product?

Well, this type of search differs from other searches intended to ascertain the patentability of a product. In fact, the purpose of the “freedom to operate” (FTO) search is to establish, through an accurate analysis of all patent literature relevant to the product concerned, whether it is appropriate to invest financial resources in the research and development of a new product to be put on the market without infringing patent or other IP rights of others.

All this, of course, in order to avoid ending up paying damages to third parties for counterfeiting or having to withdraw a product already on the market and on which time and money have been invested in research and development. It is worth emphasising that being unaware of someone else’s IP rights will not shield you from incurring an infringement procedure.

The bottom line

When planning to start a business it is of paramount importance to invest in the registration and protection of intellectual property rights by carrying out right from the beginning the search activities as above. It is equally important that these activities be carried out with the support of experienced professionals, who know the tricks of the trade and can find the most appropriate solutions to the many problems that arise in the process of establishing a business that keeps up with the times.

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Article by Matteo Mozzi, Jacobacci & Partners, partner of ESA BIC Turin.

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