Why search for existing patents?

In Australia, patents last for 20 years if the renewal fees are paid. If you're making an application for a product that's been around for more than 20 years, you may not need to do a patent infringement search. For example, any patents for wooden coat hangers or plastic plates would've well and truly expired.

However, if you're making cutting-edge technological advancements with your invention, it's essential that you conduct a patent infringement search to check if you might be infringing a current patent.

Infringement checks are complex

Patent searching can be complicated and time-consuming, so you may decide to seek expert assistance to do a comprehensive search.

To give you an idea of the complexities involved, these are some aspects that need to be considered when conducting a patent infringement search:

• Your patent might be made up of a number of components, any or all of which may need to be explored.
• When you find another patent in your search, understanding the claims in their patent can be difficult
• Accessing the full range of patents can be a challenge since there are gaps in the Australian Patent search database and abstracts of patents aren't always reliable
• You need to search all the categories under which your proposed product might be classified. This can be tricky. For example, a software program for controlling x-ray machines may be classified under 'data processing', 'image processing' or 'medical equipment'
• You need to be aware that patent applications may have been filed but not yet published.

Information to give to an IP professional to conduct a check

Because of the complex nature of doing a comprehensive infringement check, we recommend that you obtain the services of an IP professional.

If you decide to engage an attorney, you'll need to gather the following information so they can effectively search:

• Detailed technical information about your product
• Where you make or intend to make your product
• Where you sell or intend to sell your product
• When you first made and sold your product
• Whether you use third-party components.

A patent search is also very revealing when you don't find something. It lets you know that your competitors haven't already patented a great idea, a new use or a new technological step.

You're free to commercialise anything not covered by a patent's claims. Understanding precisely what they've protected gives you the chance to improve the patented technology and patent your improvement. Your patent may then allow you to commercialise the improvement.

You can find out who owns an existing patent through a search. Ownership is recorded in the patents register, and it's updated once we're notified of any change. 

If we aren't told about a change of ownership, there's protection available for those who rely on the patent register to determine who owns a patent under the Patents Act 1990

Unregistered documents are generally not admissible in court proceedings.

All security interests such as mortgages over a patent must be recorded by the secured party on the national Personal Property Security Register (PPS register).

The PPS register can be searched to determine whether there's a mortgage over a patent. However, our register of patents isn't a legal securities register  –  even though some mortgages may be recorded on our patents register, it's not always a complete record.

If a company owns a patent, you should also search company charge information (fees apply) through the Australian Securities and Investments Commission to determine whether the mortgage has been recorded on that register.

A patent can be invalidated so it's worth checking its status through a patent search. Patents can be invalidated if relevant prior art comes to light after the patent has been granted.

You can also use a search to find prior art that could be used to invalidate an existing patent.