Do You Need A Patent Search?
Patent applicants who are new to the patenting process often ask whether they need to do a patentability search prior to filing a patent application. The answer is it depends. Except in the case of applicants who are seeking to have the examination process expedited, the U.S. Patent & Trademark Office (“PTO”) does not require applicants to perform searches. However, if you want to know whether your invention may be patentable or learn what claim scope you may be able to obtain, a search may be a good idea.
Here are some things to consider when making this decision:
1. How well do you know the art?
2. How much will the search likely cost relative to the likely costs involved in preparing and prosecuting the patent application?
3. What is your tolerance for risk, i.e., the risk of learning during prosecution that your invention is not patentable?
4. Do you need to convince business partners of the merits of your invention?
How well do you know the art?
Many applicants believe that their inventions are patentable simply because they have not seen the invention in the marketplace. This is a mistake. U.S. and foreign patent offices may well have issued patents or published patent applications that disclose your invention even though it has never been commercialized. Academic journal articles may also have discussed the idea. Remember, it can take quite a bit of effort to get a product to market. Just because no one has done so does not mean that there is no prior art disclosing it.
How much will the search likely cost relative to the cost of preparing and prosecuting a patent application?
One thing to consider is the cost of performing a search relative to the costs that will be incurred if you go forward with the patenting process. In some cases, the search costs may represent a significant percentage of the cost of simply proceeding with the preparation of a patent application and waiting to see what prior art surfaces during the examination process.
Of course, not all searches are created equal. Searching can be as exhaustive or as minimal as your budget dictates. However, the search is only as good as the amount of time the searcher can devote to it. In any event, you can tailor the search to your budget as long as you are aware of the limitations of the search. A patentability search conducted for one day or less will not be as exhaustive the type of search (called an “invalidity search”) that may be conducted by patent infringement defendants seeking to knock out a patent asserted against them.
It is advisable to hire someone who is familiar with how to conduct patent searches to better ensure that key references are not missed. Nevertheless, there are some free tools that inventors can use to perform searches on their own. For example, you can conduct searches of U.S. patents and published patent applications using the PTO’s website at http://www.uspto.gov/patents/process/search/. You can also do class-based searches via the PTO’s on-line manual of patent classification at http://www.uspto.gov/web/patents/classification/selectnumwithtitle.htm. One of the drawbacks of the PTO website is that it typically provides text copies of patents and published patent applications. If you want to get pdfs of the documents as they appear in their actual published form, you can use Google Patents (www.google.com/patents), PAT2PDF (www.pat2pdf.org), or the German Patent Office website at www.depatisnet.de. With respect to U.S. patents and patent applications, PAT2PDF is generally the most comprehensive, but it can be slow. The German Patent Office website also allows you to search for foreign patents and published foreign patent applications.
What is your tolerance for risk?
You should also consider your tolerance for the risk that your patent application will be rejected. In a large percentage of cases, the PTO rejects all of the claims of patent applicants in the first office action. However, applicants can often amend their claims or submit arguments to overcome the rejections. A prior art search may give you insight into the likely rejections and allow you to build your patent application to better distinguish the prior art. If you do not do a search, you may file your application only to find out that you cannot get a patent, or at least one with any commercial value. Thus, you should consider whether and to what extent you can tolerate this risk or would rather reduce it by conducting a search.
Do you need to convince business partners of the merits of your invention?
If you are trying to get partners or investors, they will likely want some insight into the value of your patent portfolio. If you have conducted prior art searches, you can show them how your invention differs from what is already known and provide some guidance as to the scope of patent claims you may ultimately be able to obtain. If you forego a search and wait for the Patent Office to issue its first office action, it may take 1.5 to 2 years before you know what the prior art looks like.
Keep in mind that a patentability search is intended to determine if your invention may be patentable. That is an entirely different manner than determining whether you can practice the invention without infringing the patents of others. To address that issue, a different type of search called a “right to use” or “freedom to operate” search may be used.