Conducting a patent search is a great idea before applying for a patent. A patent search can help you:
- determine if your invention is novel and nonobvious (i.e., patentability) which are requirements for obtaining a patent,
- write a better patent application, and
- avoid infringing on existing patents.
What is a patent search?
A patent search is a search of the patent database looking for prior patents, publish patent applications (i.e., pre-grant publications), and other literature that discloses your idea. A patent search goes by many different names such as novelty search, and patentability search. They all refer to the same thing, namely, a patent search.
Not all patent searches are of equal quality. Some call a keyword search of a patent database a patent search. However, that is not a reliable way to conduct a patent search. There is a better way.
A good patent search requires a searcher to identify the appropriate classes and subclasses related to your idea and then keyword searches are conducted within those classes and subclasses. By doing it this way, the search results are much more relevant than a broad-based keyword search which is not limited to any particular class or subclass.
How does a patent search help you to determine if an invention is novel and nonobvious?
A patent search can help you to determine if your invention is novel and nonobvious by identifying any existing patents, published patent applications, and other literature that may be related to your invention (i.e., prior art).
To be considered novel, an invention must be new and not disclosed to the public before the filing date of the patent application. Any prior art that discloses the full scope of your invention renders your invention, not novel.
To be considered nonobvious, the invention must not be an obvious variant or combination of the prior art. The patent search will uncover a number of prior references. By determining the differences between the prior art and your invention, you can gauge the obviousness of your invention. The further away your invention is from the prior art, the less likely your invention is obvious in view of the prior art.
How does a patent search help in writing a better patent application?
A patent search can help write a better patent application because it focuses your efforts on those areas that are more patentable. It shows you aspects or features of your idea that are already in the prior art. There’s no need to focus and spend your money on these old features. You can emphasize those aspects of your idea which were not uncovered by the patent search in the patent application.
A patent search typically does not uncover the identical idea that you are trying to claim as your invention. Rather, the prior art will show that many people have already thought of ideas that are similar to your invention.
For example, if your invention has features A, B, and C, the prior art references may disclose features A & B but not C. In this scenario, you would focus your attention on getting a patent on aspect C, not aspects A & B.
How does a patent search help you to avoid infringement?
A patent search can help you to avoid patent infringement by identifying existing patents that cover similar or related inventions to yours. The claims of these existing patents can be reviewed to see if you are infringing on their patent rights.
It’s important to note that a patent search does not guarantee you will not infringe on any patent, but it can be part of your basic due diligence in reducing liability for patent infringement.
When should you do a patent search?
You should do a patent search early on in the patent process. The most beneficial time to do a patent search is before filing a patent application. The patent search acts as a go/no-go indicator.
When the patent search doesn’t uncover any relevant prior art, then it means that you are likely to get a patent. Thus, you can spend money on the patent application. On the other hand, when the patent search does uncover relevant prior art so as to make your invention not novel, then it means that you won’t get a patent. Thus, you shouldn’t file a patent application.
Why shouldn’t you do a patent search?
You shouldn’t do a patent search if you’ve already conducted one yourself. I’m not referring to a brief keyword search that you might have done on a patent database or even a Google image search. Rather, if you conducted a search following the 7-step patent search strategy, then paying a patent attorney to do one may not be valuable.
Other situations might exist that make paying for a patent search less valuable.
For example, if you have extensive experience in the technology, then your experience may be a reliable basis for moving forward with the patent process.
If you’ve already spent all of your development costs and are ready to launch, then you are probably already committed to filing a patent application to get to patent pendency. In this case, instead of conducting the patent search, just get the pattern application process started and filed before the launch date.
However, in many instances, you should still conduct a patent search since it provides additional benefits over and above the basic benefit of determining patentability.