Is a Patent Search Necessary?

As an inventor, you’re financially and personally invested in the success of your products and their future. When you’re considering filing a patent for an invention, conducting a patent search is simply one way to ensure the viability of your invention.

That said, conducting a professional patent search takes time and money. For inventors asking if a patent search is necessary, there are several schools of thought, but in general, it’s highly recommended that you have some sort of professional patent search done before filing your patent application.

Patent Search Basics

A patent search is used to determine the patentability of your invention, and it does this by finding “prior art,” or evidence of existing inventions that are similar to your own. The patent search includes prior patents, but what some inventors fail to realize is that it also includes non-patent related materials, such as:

  • Magazine, newspaper and journal articles
  • Academic records and works
  • Anything presented in the public domain

As an example, if your invention was mentioned in an industry journal two years prior to your patent search, it would be considered prior art, and would affect the patentability of your invention.

In many cases, prior art does not necessarily mean you can’t get your patent, but rather, that you must alter it in some way to make it unique, novel and unobvious. When the patent examiner who is searching for previous patents in the United States Patent and Trademark Office (USPTO) looks for similar inventions, he or she considers the novel and unobvious characteristics of your product.

A patent search is therefore a process of finding any and all prior art that can affect the patentability of your invention.

DIY Patent Searches

Doing a patent search is not required in order to file a patent application, so many inventors perform the searches themselves. This is appealing because an inventor can do a basic – and limited – search for free, using tools offered by the USPTO and other organizations.

The downside, however, is twofold: free online searches are extremely limited in scope, and extensive searches are often best performed by professionals who have experience looking for what matters most.

Because of their limited reach, online searches could prevent you from finding each of the relevant patents that might affect your own. The USPTO online search, for instance, only offers information on patents filed after 1976, unless you have the specific patent number you’re searching for, which is generally not the case.

So while you may find some relevant prior art, you’re missing a significant area of intellectual property that only a professional patent searcher can access.

Second, a professional searcher will know specifically what to look for in their search. Most importantly, he or she will be able to pinpoint:

  • Potential issues of patent infringement
  • Predicted amendments to your invention

In the first case, this can help you  avoid expensive and time-consuming patent litigation in the road. In the second, this can save you a significant amount of money on amendments that the patent examiner will require of your patent application.

If the examiner finds a patent too similar, or makes any other claim rejection, you will have to submit an amendment to your original application. This isn’t as costly as the initial application itself, but it is a noteworthy expense.

The Takeaway: doing a free online search yourself is a great place to start your initial search, but it doesn’t offer the comprehensive reach you need to make sure your invention is patentable and filing is worthwhile.

Conducting a Professional Patent Search

There is no one-size-fits-all patent search, and as you can see, prior art embodies so many materials that it could take years to fully search the public domain. To make things more complicated, your patent search should include international patents, so your search isn’t limited to the United States.

Because of the complexity and expense of filing a patent, a professional search is the best way to determine the patentability of your invention. A professional search conducted or managed by your patent attorney can help you:

  • Discover how unique, novel and unobvious the invention is
  • Find what changes, if any, you’ll need to make before filing
  • Determine the overall patentability of your invention

This last benefit is typically a patentability opinion, which is an overall judgment of your invention in regard to prior art and uniqueness. Your patentability opinion will essentially give you the green light (or red light) to your patent, and discuss any changes you need to make before filing your patent application.

They key to a professional patent search is balancing reach with cost. You’ll want an extensive search done, of course, but the exact reach you require will depend on your invention, industry and other factors. More complicated inventions that are backed by large corporations and have complex parts will require a more extensive – and expensive – search in order to best ensure patentability.

A single inventor with a unique product that has no current market, however, may not require the same level of searching. In either case, it’s best to consult a patent attorney who is familiar with your product and the patent search process.

Getting Started on Your Patent

If you’re considering a patent search, it’s recommended you discuss your options and intellectual property plan with an attorney who can ethically and effectively protect your ideas. At JacksonWhite Law, that’s our specialty.

We work to ensure the security and future of your assets. If you need help with a patent or patent search, contact us today and we’ll be glad to review your protection options.

Call Steven Laureanti today at (480) 426-8397 to discuss your patent needs.

 

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