Prior Art Search and Freedom to Operate Search in Patent Search

Prior Art Search and Freedom to Operate Search are two types of patent searches with completely different goals. However, sometimes, these two types of searches are often confused.

• Prior Art Search is conducted from the perspective of the inventor or applicant. Its main purpose is to determine whether an invention is novel and inventive, which are two important criteria that need to be met to obtain patent authorization. There are now technical searches that focus on finding any prior public information that may affect the novelty or inventiveness of the invention, such as patents and patent applications, and also include some non-patent literature, such as scientific papers, conference materials, manuals, etc.
• Freedom to Operate Search , or FTO Search, is a search that is conducted from the perspective of a company or organization that wants to launch a product or use a process. The goal is to determine whether such behavior will infringe on the intellectual property rights of third parties, especially whether it infringes on the rights of patents that are in effect and patent applications that are under review. Therefore, this search focuses on valid patent rights, that is, patents that have been applied for less than 20 years and for which annual fees have been paid to maintain validity, as well as patent applications that are under review, which may pose an infringement risk when the technology is put on the market or used.

Two types of searches with different methodologies

• When conducting a prior art search , the general search involves patent databases of countries around the world, in various languages, and in various time periods, because the patent office uses the absolute novelty standard when examining, which is not limited by language, time or region. During the analysis process, each patent document or non-patent document will be reviewed in its entirety, including the claims, description, and drawings. Therefore, even a document published in Korean 30 years ago may undermine the novelty or creativity of an invention.
• FTO searches only focus on patents and patent applications in relevant countries/regions. For example, a Chinese patent document has no legal effect in Europe, so if the search is only for the European market, it will not be included in the infringement analysis. During the analysis process, the focus is on independent claims, and the description and drawings are only used to assist in understanding their meaning. Therefore, the documents identified in the prior art search are usually not directly available for free-to-implement searches, and even if they can be, they must be re-analyzed from different perspectives.

Benefits of prior art search:

• Assess whether an invention is patentable
• Identify the most innovative technical features to guide the writing of patent application documents
• Reveal existing technical solutions, which may inspire improvements or alternative directions
• Avoid unnecessary costs for patent applications for inventions that cannot be patented

Benefits of FTO Search:

• Identify potential infringement risks before products or processes are officially released
• Provide scientific decision support for product development and business strategy
• Identify possible licensing or partnership opportunities
• Avoid costly patent litigation and damage to your company’s reputation

Prior art search and FTO search can be conducted in parallel, but the most appropriate time to conduct them is different:

• Prior art searches are best conducted early in the innovation process, once a potential invention has been identified and before significant resources have been invested in research and development or commercialization:
  • Assess the likelihood of granting a patent before filing it
  • Before making major R&D investments, ensure the right direction
  • Before looking for external partners
  • Conducted regularly during the development process to incorporate the latest published literature
  • Before disclosing the invention to the outside world
• FTO searches are more appropriate at later stages of product or process development, but should be completed prior to formal commercialization:
  • When the main features of the product or process have been completed
  • Before investing in large-scale production or marketing
  • Before entering a new market
  • Regular updates throughout the product lifecycle to address newly issued patents
  • When considering an M&A, assess the target company’s technology freedom to operate

Although the goals and perspectives are different, prior art searches and freedom to operate searches are both core tools in IP strategic management. Enterprises can use these two tools according to their own needs.