When it comes to protecting intellectual property, one common area of confusion lies in the various types of searches available for discovering if your process, product, or idea infringes upon existing IP. Grasping these distinctions is critical before committing time and resources to a new product or idea. Mistakes at this stage can lead to legal disputes or even the loss of intellectual property rights. This is why consulting an experienced attorney is essential.
At Barsik Law Offices, we have guided countless inventors, startups, and established companies through intellectual property challenges. We provide dedicated legal support across Pennsylvania, including Allentown, Philadelphia, and Stroudsburg, as well as throughout New Jersey, serving communities such as Morristown, Newark, Summit, Bedminster, Roxbury Township, Dover, and Denville. Our goal is to provide you with the clarity needed to make informed business decisions.
What Is a Patent Search?
A patent search, often called a novelty search, answers one fundamental question: "Can I get a patent for my invention?" This search is the first step for most inventors after they have documented their idea. Its purpose is to uncover any "prior art" that might prevent the U.S. Patent and Trademark Office (USPTO) from issuing a patent.
Prior art is a broad term. It includes any public evidence that your invention is not new or that it would have been obvious to someone skilled in the field. This can include existing U.S. and foreign patents, published patent applications, scientific papers, articles, websites, and even products that were sold or publicly displayed. If something substantially similar to your invention already exists in the public domain, you likely cannot obtain a patent for it.
The Scope of a Patent Search
When you conduct a patent search, you should focus on the specific claims you want to make for your invention. The search is a deep dive into patent databases and other technical literature, and you should look for anything that reads on the core elements of your idea. For example, if you invented a new type of coffee mug with a self-heating element powered by a small solar panel on the handle, a patent search would look for:
Existing patents for self-heating mugs
Published applications for similar technology
Technical articles discussing solar-powered beverage containers
Any products, past or present, that use a similar mechanism
The result of this search is typically an opinion letter. This letter details the prior art the search uncovered and offers a professional judgment on the likelihood of your patent application succeeding. It helps you decide whether to move forward with the expensive process of drafting and filing a patent application. A thorough search can save you thousands of dollars and immense frustration by identifying potential roadblocks early.
Understanding a Freedom-to-Operate (FTO) Search
While a patent search looks at whether you can get a patent, a freedom-to-operate search answers a different, equally important question: "Can I make, use, or sell my product without infringing on someone else's patent?" This is also known as a clearance search.
Having a patent does not automatically give you the right to sell your invention. Your new product could incorporate technology that is already protected by someone else’s active patent. If you move forward without checking, you could be setting yourself up for an infringement lawsuit.
The Scope of an FTO Search
An FTO search is generally broader and more complex than a patent search. It focuses only on active, in-force patents in the specific geographic locations where you plan to do business. Expired patents, published articles, and abandoned applications are not relevant here because they cannot be infringed upon.
Taking the solar-powered coffee mug example into account, if you performed a patent search and found nothing exactly like it, you could successfully obtain a patent. However, if an FTO search revealed that another company holds a valid patent on a specific type of miniature, high-efficiency solar cell —the very kind you designed into your handle —your product would likely be flagged.
Even though your overall product is new and patented, using that specific solar cell infringes on their patent. The FTO search would identify this risk and enable you to:
Design around the existing patent (e.g., find a different solar cell)
Attempt to license the technology from the patent holder
Challenge the validity of their patent
Decide whether the risk is too high and halt the project
An FTO search is a risk-management tool. It provides a snapshot of the patent landscape, giving you the information needed to launch your product with greater confidence and a lower chance of facing legal action.
Patent Law Considerations in Pennsylvania and New Jersey
Patent law is a federal law, meaning the rules for obtaining a patent and the definitions of infringement are uniform across the United States. A patent granted by the USPTO is enforceable in all states, including Pennsylvania and New Jersey. However, the legal proceedings for patent infringement lawsuits often take place in federal district courts located within these states.
Both Pennsylvania and New Jersey are home to numerous innovative companies and federal courts that handle patent litigation. The U.S. District Court for the District of New Jersey, for instance, is a common venue for patent cases involving pharmaceuticals and technology. Similarly, the federal courts in Pennsylvania, such as the Eastern District in Philadelphia, frequently hear complex patent disputes.
When you work with a law firm licensed in these states, their attorneys will be familiar with federal patent law and the local federal court procedures and judges. This regional presence can be a significant advantage if your patent rights are ever challenged or if you need to enforce them against an infringer operating in these regions.
Patent Attorney Serving Pennsylvania and New Jersey
At Barsik Law Offices, trust forms the foundation of every client relationship, built on open and honest communication. Our commitment is to achieve the best possible outcomes for you. With extensive experience in patent law and a proven track record, we deliver effective legal representation tailored to your needs.
By working closely with you, we strive to understand your unique situation and develop personalized solutions tailored to meet your specific goals. Contact us today to schedule a consultation with our skilled patent attorney. With offices in Parsippany, New Jersey, and Bethlehem, Pennsylvania, we serve clients in Pennsylvania, including Allentown, Philadelphia, and Stroudsburg, as well as New Jersey, including Morristown, Newark, Summit, Bedminster, Roxbury Township, Dover, and Denville.
