Before you apply for a patent, it is important to conduct a comprehensive search for patent information. This step in the application process helps you to avoid wasting time and money by applying for protection for something that has already been invented.
Searching for patent information can often be complicated, time consuming and costly. For specific assistance or to seek advice you may wish to contact an intellectual property (IP) professional.
Why you should search
Before introducing a new product to the market you need to ask yourself two things:
- Can I protect my invention with a patent?
- Does my invention infringe someone else's patent?
Searching can help answer these questions, as well as to:
- determine who owns what IP
- check that your IP is not being infringed
- obtain product information on your competitors for research purposes
More than 40 million patent documents have been published worldwide, with almost a million more added every year.
Each patent document includes a detailed description of an invention (usually with drawings) and information about the inventor and applicant.
Finding out what exists
‘Prior art’ is information on inventions that have already been publicly disclosed. A prior art search will help give you an idea of what technology exists. This will allow you to make an informed decision on whether or not your invention is unique and able to gain patent protection.
If a product similar to your invention has been patented or described in a printed publication anywhere in the world, it may affect the possibility of you gaining patent protection.
Some places to search may include:
- Australian and overseas patent databases (including the Patent Cooperation Treaty database)
- scientific journals and other publications (such as Google Scholar)
- existing products
- proprietary databases
- the internet
Australian patent information
The Australian patent database can be a good place to start a search if you have limited resources. You might find a similar invention right away and avoid the time and cost of a wider search. Alternatively, it may help you decide on the technical areas in which to concentrate your search effort.
Our database provides up-to-date information about Australian patents. However, Australian patents reflect only a small percentage (approximately seven per cent) of world patenting activity.
If you need to widen your search, different databases and other relevant sources will have to be searched thoroughly. If you rely solely on a single database search your results will be limited.
Patent information is classified by its subject matter and can be searched worldwide using both commercial databases as well as a number of free patent databases.
Using these databases effectively is a specialised skill. For this reason you may want to contact an IP professional to carry out a search for you.
Making sure you don’t infringe someone else
When introducing a new product, you need to make sure it does not infringe someone else's patent. Searching the Australian patent database is a useful place to start.
A patent infringement search may not be necessary for every product. It may be clear from the length of time similar products have been on the market that your product does not infringe any patents.
As an example, if you are making wooden coat hangers or plastic plates, it is unlikely you will infringe another's patent. Australian patents last for 20 years. Since wooden coat hangers and plastic plates have been on the market for longer than 20 years, any patents would have well and truly expired.
On the other hand, if you are making cutting-edge technological advancements with your invention, it is essential that you conduct a patent infringement search. Technology that is quite new may infringe a patent that has not yet expired.
You should consider the following when conducting a patent infringement search:
- Is the product made up of a number of components and, if so, should you conduct a search for some or all of these?
- How will you interpret the claims of any patents you find to determine whether you may be infringing them? Reading and understanding the claims of a patent is often a challenge.
- How can you access the full range of patents? While the full text of nearly all Australian patents is available in electronic form, there are gaps. Abstracts of patents can be searched electronically but are not always a reliable guide to the patent's contents.
- How can you ensure that you have searched all the categories under which your proposed product might be classified? For example: a software program for controlling X-ray machines may be classified under 'data processing', 'image processing' or 'medical equipment'.
- How can you determine whether there is an outstanding patent application on your particular product? Patent applications may have been filed, but may not yet have been published. These are unsearchable. When a patent is granted on that application your product may infringe it.
Patent searching can be complicated. Searching will not always guarantee that your product does not infringe another person's patent. You may consider seeking expert assistance when searching.
If you do, they will need to know the following to carry out an infringement 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
Obtaining competitive product information
All granted patents and some pending patent applications are published. A key purpose of the patent system is to publish knowledge and promote progress.
Australian and foreign patent databases include huge volumes of technical knowledge. Searching them and studying pending patent applications and granted patents can provide a lot of useful information about your competitors' products and future directions.
You can search patent databases to find:
- all published patents owned by a competitor
- technical details of another system
- all published patents on a particular topic, product or technology
- details of technology that can possibly be licensed
A patent is both a technical and a legal document with information that allows a person who is skilled in the area to make and use the patented invention.
Using competitive product information
Competitive product information can be used in two ways:
- to design around a patent
- to get a step ahead of competitors
You are entitled to commercialise anything not covered by a patent's claims. For example, you may discover a significant area or use for a product that is not covered by your competitor's patent.
You may improve on the technology patented and patent your improvement. Your patent may then allow you to commercialise the improvement.
Determining who owns a patent
You can search the Australian patents register to determine who owns a patent.
It is possible for the ownership of a patent to be transferred. Once we are notified of the change, we will record the details in the patents register.
Although a change of ownership is effective even if we are not told about the change, the Patents Act 1990 provides protection for those who rely on the patents’ register to determine who owns a patent. Unregistered documents are not admissible in court proceedings except in certain circumstances.
Determining if a patent has been mortgaged
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 is a mortgage over a patent. Our register of patents is not a legal securities register. Some mortgages may be recorded on our patents register, however it is 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.
Determining whether a patent is valid
Just because a patent has been issued does not always mean it is valid. Relevant prior art may not have been uncovered when we conducted the examination of the patent application and if this prior art later comes to light, the patent can be invalidated.
You may be concerned about infringing another party's patent. However, a prior art search may find that the patent can be invalidated.