Prior Art Search: Is it Necessary Before Filing a Patent Application?

 

A question that is often asked by new inventors is: should I do a prior art search before filing a patent application? The answer, as in most areas of law and life in general, is that it depends.

Should you do a prior art search?

For individual inventors and smaller companies including start-ups, in most circumstances, I would suggest that yes you should do a prior art search. Many larger companies have a number of scientists and technologists who are familiar with the technology and what their competitors are doing. They can also absorb the potential risks of not doing a prior art search. Most small entities and start-ups do not and can not.

Many, if not most, new inventors are convinced that they are the only ones that have thought of the idea that they seek to patent. They believe that they have had a flash of insight that no one else has had. They may even do a bit of Internet research to convince themselves that they are in the clear and that there is no need to do a prior art search. They are often surprised by the results when they do have a search conducted.

Reasons to do a search

The risks of not doing a search are several. First, and most importantly, if you plan to commercialize or market the invention as a product or service, you don’t want to get slapped with an infringement lawsuit right out of the gate. These suits are extremely expensive even if you don’t get hit with a large damage award. There is a risk that you will not be able to afford to defend such a suit and that all of your hard work in developing the invention, getting it through the prototype stage, and getting it to market would be wasted. Usually, there is a significant monetary and time investment involved with these steps. There is also a risk that a court could issue an injunction that would prohibit you from making, using, selling, or offering the invention for sale.

Second, conducting a prior art search prior to preparing a patent application may make prosecution of the application more efficient and cost-effective. By knowing the closest prior art, the patent application and the claims may be prepared more strategically to take advantage of areas of patentability. Claims may be prepared that get close to the prior art without encroaching on it. It may be possible to develop arguments and strategies for convincing the patent examiner that the invention is non-obvious vis-a-vis the prior art.

You may find that the invention needs to be reconfigured to “design around” patents that are found. This could add to the value of the invention and potentially give you a competitive advantage. You may find, however, that someone else has a patent that directly prevents you from patenting your invention. In such a case, you may determine whether to abandon your endeavor or seek to partner with or secure a license from the patent holder.

The main disadvantages of conducting a prior art search are that it will cost some money and that any material prior art that is uncovered must be disclosed to the Patent Office during prosecution of any patent application that is filed for your invention. The cost is usually not significant in the overall scheme of bringing a new product or service to market and preparing and prosecuting a patent application. In fact, a good prior art search can make these endeavors more efficient. Most patent applicants are looking for strong patent protection in which case it is not a disadvantage to bring prior art to the patent examiner’s attention. This will permit the patent to be “vetted” over that prior art.

Mechanics of a prior art search

A patent attorney can assist you in having a prior art search performed. A brief written description and possibly a few drawings or sketches of the invention should be prepared. This information is provided on a confidential basis to a professional patent search firm that will conduct the patent search. These firms are usually located in Northern Virginia near the PTO and are staffed with engineers and scientists, at least some of whom may be former patent examiners. The search firm provides the information to a person with skill in searching the subject matter of the invention who conducts the search.

A good “freedom to operate” and patentability search takes a couple of weeks to complete and usually costs less than $2,000, often less than $1,000. For a “freedom to operate search,” the searchers will search that claims of US patents that are currently in effect. For a patentability search, the searchers will also search for older US patents, foreign patents, and non-patent literature that may disclose the invention.

The results will typically include a stack of the closest 20-30 patents and other prior art references. My practice is to provide these results to the inventor with instructions to review them in detail and to bring any that the inventor believes warrant further review by me to my attention, in any event the closest 3-4. This saves on attorney time of having to review the entire stack. The inventor is usually in the best position to determine any differences or similarities between the references and the invention. At that point, we determine how best to proceed with the matter based on the search results.

One might reasonably ask why the inventor or the attorney cannot themselves conduct the prior art search on Google, the PTO website, or another search engine. One answer is that it is far more efficient for these experts to perform the search than for the attorney to do so. Their hourly rates are typically much less. Second, I am always amazed that the professional searchers find prior art that I or the inventors have not been able to find.

In sum, I almost always advise a new inventor, small company, or start-up to have a prior art search done prior to marketing the invention or preparing a patent application. In my opinion, the advantages of such a search far outweigh the risks or costs of doing so.

---