Patent search in Ukraine for Inventions and Utility Models

Patent Search: Review of an Invention and Patent Risks

Patent search is a systematic analysis of patent applications, granted patents, and other sources of technical information aimed at identifying solutions that may be relevant to a new invention, utility model, product, or technology. A patent search may be conducted:

• before filing an application for an invention or utility model;
• before launching a new product;
• before entering a foreign market;
• when developing an IP strategy;
• before entering into a licensing or investment agreement;
• when analyzing competitors;
• when assessing the risk of infringing third-party patent rights.

It is important to understand that different objectives require different types of searches. For example, a novelty search and a freedom-to-operate search are not the same thing.

A properly defined patent search task makes it possible not only to find similar documents, but also to understand what they mean for a future patent or for the commercial use of a product.

Why Conduct a Patent Search Before Filing an Application?

One of the main objectives is to assess the prior art. For inventions, novelty is assessed against what became publicly available before the relevant date. In patent practice, prior art may include more than patents alone. It may include:

• published patent applications;
• granted patents;
• scientific articles;
• technical documentation;
• catalogues;
• public presentations;
• other publicly available sources of technical information.

Therefore, searching only by the name of a device or in a single patent database may be insufficient.

What Is Reviewed When Patenting an Invention

For an invention, novelty is not the only criterion that matters. Key patentability criteria include:

• novelty;
• inventive step;
• industrial applicability.

International patent practice is also based on the principle that an invention should contain a new technical feature, should not be obvious to a person skilled in the relevant field, and should be capable of practical application. That is why search results should not be analyzed mechanically, but through the combination of technical features that may form the future patent claims.

Novelty Search

A novelty search is conducted to determine whether a similar technical solution has already been disclosed. A lawyer or patent specialist analyzes:

• the essential features of the development;
• similar technical solutions;
• priority and publication dates;
• claims of identified patents;
• descriptions, drawings, and examples;
• other relevant sources.

If a single document already contains all essential features of the claimed solution, this may create a novelty issue. However, even where there is no complete analogue, several known solutions may still be relevant when assessing inventive step.

Prior Art Search

A prior art search is broader than simply checking whether “the same patent already exists.” Its purpose is to understand:

• which technical solutions are already known;
• who is working in the relevant technology;
• which problems have already been addressed;
• which structural or technological approaches are used;
• how the client’s development actually differs.

Such a search is useful not only to lawyers. It may provide the development team with information that allows the design or technology to be modified before the application is filed.

Freedom to Operate

Freedom to Operate (FTO) is a separate type of patent analysis. Its purpose is not to determine whether the client can obtain their own patent, but whether commercial use of the product may infringe existing rights of third parties. The analysis may cover:

• patents currently in force;
• published applications;
• patent claims;
• legal status of the documents;
• territorial scope of the rights;
• remaining term of protection;
• possible dependent patents.

An FTO search is always territorial. For example, a product may be free to use in Ukraine but create patent risks in Germany, the United States, or another country.

How a Novelty Search Differs from Freedom to Operate

Patent Landscape

A patent landscape is an analytical study of a particular technological field. It may be used for:

• competitor analysis;
• identification of major patent owners;
• identification of technology trends;
• search for unoccupied technological niches;
• assessment of R&D opportunities;
• analysis of potential partners or licensors.

Unlike a classic novelty search, the objective here is not one particular invention, but an overall map of the technological field.

Patent Monitoring

A patent search may be conducted once or on a recurring basis. Patent monitoring makes it possible to track:

• new competitor applications;
• newly granted patents;
• development of a particular technology;
• changes in the legal status of relevant patents;
• new potential risks for a product.

For technology companies, regular monitoring may form part of the overall IP strategy.

Where Patent Searches Are Conducted

Searches may use:

• national patent databases;
• WIPO PATENTSCOPE;
• Espacenet;
• databases of individual patent offices;
• scientific and technical sources;
• specialized professional databases.

For example, PATENTSCOPE contains international PCT applications and a significant body of national patent documentation. However, access to a database does not by itself guarantee a high-quality search. It is necessary to properly develop:

• keywords;
• synonyms;
• technical terminology;
• patent classifications;
• logical combinations of search queries.

Search by Patent Classification

A keyword-only search may miss a significant number of relevant documents. The reason is simple: the same technical object may be described using different terminology. That is why international patent classifications are used. They make it possible to identify documents:

• in different languages;
• using different terminology;
• with different titles;
• but performing the same technical function.

For complex technologies, a high-quality search usually combines text queries with classification searches.

Why Patent Claims Must Be Analyzed

One of the most common mistakes is to assess a patent only by its title or illustration. The legal scope of patent protection is largely defined by the claims. Therefore, a detailed analysis reviews:

• independent claims;
• dependent claims;
• the combination of technical features;
• the invention description;
• drawings;
• the patent family;
• the legal status of the document.

This is especially important for FTO, where it is not enough to simply identify a similar patent — it is necessary to determine whether the specific product falls within the scope of enforceable patent claims.

Patent Search Before Filing an International Application

If a company plans to enter international markets, a preliminary search may help determine:

• whether filing an international application is commercially justified;
• which countries are strategically important;
• how patent-intensive the relevant field is;
• which competitors have strong patent portfolios;
• how the future claims should be structured.

WIPO expressly recommends reviewing prior art before filing because identified materials may show that the costs of patenting are not economically justified.

Confidentiality Before Filing

Before patenting, it is important not only to identify prior art but also to avoid destroying the novelty of your own development through premature disclosure. Before filing, without a proper strategy, it may be risky to:

• publish a detailed description of the development;
• demonstrate it at an exhibition;
• publish technical information on a website;
• provide a full description to potential partners without an NDA;
• publicly demonstrate the key technical solution.

WIPO recommends keeping an invention confidential before filing because prior public disclosure may destroy novelty in many jurisdictions.

Can a Patent Be Guaranteed After a Search?

No. Even a detailed preliminary search cannot guarantee that a patent will be granted. The reasons include:

• it is impossible to guarantee identification of every possible source;
• some applications remain unpublished for a certain period;
• the patent office conducts its own examination;
• the assessment of inventive step may differ;
• the wording of the application itself matters.

Therefore, the search result is a professional assessment of risks and prospects, not a guarantee of patentability.

Trademark Search Is a Separate Service

A search for similar trademarks should not be included in an invention patent search. Patents protect technical solutions. Trademarks protect signs that distinguish the goods and services of one business from those of others. Therefore:

• review of an invention — patent search;
• review of a name or logo — trademark search;
• review of a product’s appearance — may require a separate industrial design analysis.

How a Patent Search Is Conducted

1. Receiving the description. The client provides technical information about the development.
2. Identifying essential features. We determine what is technically new in the solution.
3. Developing the search strategy. Keywords, classes, and relevant databases.
4. Initial search. We identify the closest prior solutions.
5. Detailed analysis. We review claims, descriptions, dates, and patent families.
6. Legal analysis. For FTO, we additionally check validity and territorial scope of rights.
7. Report preparation. We organize the most relevant documents.
8. Recommendations. We determine the possible next step: filing an application, modifying the claims, improving the product, or conducting an additional FTO review.

What the Client Receives

Depending on the task, the result may include:

• a list of the closest patent documents;
• a brief explanation of relevance;
• priority and publication dates;
• analysis of key features;
• a preliminary novelty assessment;
• an inventive-step assessment;
• the legal status of relevant rights;
• an FTO risk analysis;
• recommendations on patent strategy.

Cost of a Patent Search

The price depends on the complexity of the technology and the depth of the research. The cost is affected by:

• the type of search;
• the complexity of the technical solution;
• the number of independent technical concepts;
• the number of countries covered by the FTO analysis;
• the volume of identified documents;
• the need to analyze legal status;
• the depth of claims analysis;
• the need for subsequent preparation of a patent application.

Common Patent Search Tasks

Conclusion

A patent search is not simply a check of whether a similar patent exists in a database. Depending on the business objective, it may be used to assess novelty, inventive step, prior art, the competitive environment, or freedom to operate for a future product. A search provides the greatest value when it is conducted before significant expenditure on patenting, manufacturing, or entering a new market.

Have you developed a new device, technology, or method and want to understand whether it is worth patenting or can be safely launched on the market? Submit a request on the Prikhodko & Partners Law Firm website. We will determine the appropriate type of patent search, analyze the relevant documents, and prepare practical recommendations for protecting your development.