It is possible to conduct searches of the patents, design and trade marks databases for information on infringement, validity, or research.
Before filing a patent application it can be useful to conduct a search to look for any prior rights in that field. This can be useful as it can save the expense of filing a patent application and further development work if an invention is already know, or can direct development and patent protection down the path of one of several feature one may have invented.
However, there are difficulties with searches. The first is that applications are not published for eighteen months and thus if a patent application was filed six months ago, it will not be possible to find it in a search of published documents, but it may still prevent the grant of a new application. The second difficulty is that there are two main ways of searching for patent publications, the first being using the classifications system and the second being using key words. The first method is slightly more reliable than the second, however, no classification system can be perfect and there are instances where classification is not entirely logical, a publication is classified incorrectly, or where a relevant publication is in a different classification to the new invention but is nevertheless relevant.
In addition, this is usually a more time consuming search and therefore more expensive. With the second type of search, using key words, it is often possible to describe a feature in many different ways, some of which are clear and obvious, others of which are not. A key word which will cover the greatest number of variations around and idea will often find the greatest number of earlier publication, which then need to be assessed to determine whether they are relevant. A more specialised word, or combination of word may reveal a more limited number of prior publications, which are likely to be more relevant, but if it possible that the most relevant document did not use those particular words. Thus patent searching can never be 100% accurate, although a larger budget can increase the accuracy.
There is also a difference between searching for earlier publications that destroy the novelty or inventiveness of a new invention, and search for patents that would be infringed by a new invention. It s possible for a new invention to infringe an existing patent, yet still contain novel and inventive material and thus be patentable. Equally it is possible that a new invention may be prevented from obtaining patent protection due to prior publications, but that the use of the new invention is not an infringement of any patent due either to minor differences or the relevant patents not being in force in the relevant countries.
It can also be useful to carry out a search prior to filing an application to register a trade mark, or before starting to use a trade mark. With trade marks, a registration covers a particularly territory, and thus searching is advisable in each territory where use or registration is proposed. Simply because a mark has been used in the UK for many years, it does not means that there are no difficulties with extending the use of that mark to France or the US for example.
There are also difficulties with trade mark searching, in that marks that are similar to a proposed mark can also prevent the use and registration thereof. There are also the difficulties of errors and delays in the register.
Prior unregistered rights can prevent the use and registration of a mark. Being unregistered, there is no single place to search for such rights, and while an internet general search can be useful, it will not find all potential prior rights.