Why do a Patent Search?
The rights of a patent may only be conferred on the inventor if the invention is new and inventive. The invention must thus be novel. This means that the key aspects of the invention may not have been described in any form anywhere in the world before the first application for that patent has been made. In order to check whether the invention is new, a patent search must be undertaken.
South Africa has an absolute or international novelty requirement.
It is difficult to assess conclusively whether or not an invention is indeed novel, but novelty may be assessed through carrying out searches through existing printed publications. Patent attorneys are skilled in conducting searches through specialist patent websites and patent databases on the Internet to ensure where possible that the invention has not been patented elsewhere in the world.
Only if no similar invention is found can the inventor go ahead with the next step of registration, and even then there may still be subsisting patents which may be detrimental to the eventual novelty of the invention. Before bringing a new product to market (whether one has applied for a patent or not), it is advisable to carry out an infringement search (also called a “freedom to operate” search” in each country where you wish to market, produce or sell your product. In South Africa, such as search has to be conducted through the search facility at the CIPC Office in Pretoria in their paper based Disclosure Centre.
This patent search is a manual search and may be carried out by the applicant himself/herself. However, it is advisable that the prospective applicant should exercise caution and obtain the services of a Patent Attorney to carry out this search on his/her behalf. Patent attorneys are well versed in this aspect of patent law and practice and are skilled in conducting such patent searches.
Patent searches in other countries are a little easier than in South Africa as the patent records of numerous industrialised countries are available on-line in specialist databases. For example in the United States of America their Patent Office carries a database that goes back to 1790, although records before 1976 are not easily searchable. It is important to remember though that, if you intend to export the invention, then you should certainly think about extending your patent rights to those countries in which you intend to market your patented product.
If the inventor intends to patent his/her invention in Patent Co-operation Treaty (PCT) countries, then a few months after filing the PCT Application an International Search Report will be issued to him/her listing any prior documents relevant to the claims that have been identified by the International Searching Authority.
If the novelty or inventiveness of the invention as described is detrimentally affected by the search report, it may be possible to amend the claims in order to distinguish the invention from the publications located by the PCT examiner’s search. However, the search report is only received once the PCT application has been provisionally published, meaning that it is not possible to keep the invention secret by withdrawing it after the search report has been issued.