Knowledge Center: Pros and Cons for Making a Patent Search Prior to Filing A Patent Application

Pros and Cons for Making a Patent Search Prior to Filing a Patent Application

Reasons for making a patent search prior to filing a patent application include:

  1. Identifying prior art and the scope of the patentable invention: A patent novelty search can help identify existing patents, published patent applications, and non-patent literature that may be relevant to the invention. This can help determine whether the invention is truly novel and non-obvious, which are requirements for obtaining a patent. It can also assist in identifying the breadth or scope of potential patent protection on which a decision can be made on whether to continue with the patenting process.
  2. Avoiding infringement: By conducting a patent infringement search, an inventor can identify any existing patents that may cover the same or similar invention. This can help the inventor navigate though patent minefields and avoid inadvertently infringing on existing patents, which may lead to costly legal disputes.
  3. Improving the chances of obtaining a patent: A thorough patent search can help identify any potential obstacles to obtaining a patent, such as prior art that would be used to reject a patent application. This information can be used to focus the patent application on non-obvious subject matter and improve the chances of obtaining a patent.

Reasons for not making a patent search prior to filing a patent application include:

  1. Time and cost: Conducting a patent search can be time-consuming and add expense, especially if the invention is in a complex field.  Further an individual may need to first file the patent application to secure an earlier filing date which otherwise would be delayed by the search.
  2. Searching capabilities: Even with the best search tools and techniques, it can be difficult to identify all relevant prior art. So having access to one or more countries of issued patents such as the US and EPO databases by an experienced patent searcher is essential.
  3. Lack of expertise: Conducting a patent search requires a certain level of expertise, and not everyone has the knowledge and skills to conduct a thorough search so a patent professional experienced in patent searching needs to be engaged.
  4. The inventor may be confident that their invention is new and non-obvious based on the inventor’s understanding of the state of the prior art in his or her field of work.

In conclusion, while conducting a patent search prior to filing an application can be beneficial at saving downstream costs related to patent application drafting and prosecution, it is not always a guarantee of a successful granting of a patent.  If a search is not conducted, the patent application should be drafted to describe and claim multiple inventive aspects or embodiments which may be used to limit the scope/breadth of the claims to distinguish over prior art cited by the Patent Examiner during the application process.  Ultimately, it is up to the individual or company to weigh the pros and cons and make a decision based on their specific situation.

The foregoing is provided for information purposes only and is not intended to be used as patent legal advice.