The Importance of Conducting a Patent Search Before Prosecution
Often overlooked, a patent search is, in fact, a valuable tool that can help inventors save time and money by avoiding the most common pitfalls involved in patent prosecution.
Under U.S. patent law, for an application to even be considered, the invention must meet certain patent requirements. The invention must be new, useful, non-obvious, and subject matter eligible. After the “Eureka! moment”, many inventors want to dive straight into the application process. They might assume that since the creation that they have envisioned isn’t already on the market, then it must automatically meet said requirements. Could it really be that simple?
Unfortunately, it isn’t. With more than 40 million patent documents already published worldwide, and a million more added every year, only a tiny fraction of these inventions will end up going to market. Reasons for this may vary, with the most common being that the inventor failed in addressing one or more of the following components of the process as illustrated below.
Furthermore, the volume of patent applications is continuously growing. According to the World Intellectual Property Organization, international patent applications increased by 4.5% to 243,500 in 2017. It’s also worth noting that not all patent applications that are filed are prosecuted successfully.
The journey from the conception of an idea, to the grant of a patent, can often be arduous, time-consuming and costly. It makes sense to start by researching the prior art to get an idea of what technology already exists. This will enable the inventor to make an informed decision on whether investing further in the invention is feasible.
Apart from the distinct advantage of making sure that no existing intellectual property is going to be infringed upon, there are other benefits to conducting a patent search.
Avoid Costly Investment Decisions
Considering that filing a patent application is more expensive than conducting a patent search, going ahead with filing a patent application without knowing if the invention meets the requirements for patentability does not make business sense. It could end up costing more in the long run, if the costs involved in submitting multiple applications are taken into consideration.
It’s always better to find out early on that similar or identical inventions have already been patented. By analyzing the results of a patent search, inventors have the chance to hit the brakes and go back to the drawing board before it’s too late.
Improve the Patent Application
By becoming more knowledgeable and familiar with the literature available for the field of the invention, inventors may also be able to then use this knowledge to their advantage, by implementing strategies and methods to improve their current design and consequently draft a stronger patent application. This is critical not only to increase the chances of having the patent granted but also to help to make it “litigation-proof” in the future.
Quite often, companies that want to invest in a technology that has already been patented, might bring the companies currently holding those rights into litigation, purposefully to get the patent reviewed and possibly, declared invalid.
If there is ever a dispute over whether a patent is being infringed upon, everything that the Patent and Trademark Office did in terms of granting a patent is then thoroughly reviewed, meaning that the original patentee could end up losing the patent.
Gain a Competitive Advantage
One of the most intriguing benefits of performing a patent search, as it applies to a broader scale, is investigating pending patent applications or existing patents. This activity can give the inventor useful insights into their competitor’s products or corporate strategies, thus making it easier to make decisions upon the venture’s future direction.
Technology maps (which can be created using data obtained through the patent search) are particularly useful in this sense since they can offer an accurate visualization of the competitor’s R&D expenditure and diversification.
It should be clear by now that patent search is an essential piece of the IP protection puzzle. One that, despite the initial investment, can save the inventor several headaches down the road. Furthermore, even if the inventor is an expert in their field, and they believe that their invention is original and unique, there are many great ideas that have been disclosed in patents, that are not yet well known.
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