When and Why to Get a Patent Search for an Invention

Why Is a Patent Search Important?

A patent search will provide valuable insight into similar technology and inventions to help determine whether there is any previous invention that could bar the use and/or registration of a seemingly novel idea.  Since the patent prosecution process for obtaining registration can be lengthy and costly, it is important to have any knowledge and foresight possible prior to proceeding.  

Likewise, even when not seeking patent protection, the release of a new product for sale could potentially infringe upon a third party’s patent rights.  So, before pushing out what may seem like a novel product in mass quantities with originality claims, a patent search is recommended.

Reasons for Getting a Patent Search Prior to Filing An Application

An initial patent search will help determine whether an idea is patentable, whether it overlaps with a previous invention, and whether there are changes that can be made to help improve an invention to help with breadth and viability based on any potential existing prior art.  A patent attorney experienced in the type of technology involved can provide guidance based on the review of a professional patent searcher’s search report findings and assist with making changes or crafting language to help overcome potential bars to registration.  Attorneys can help develop patent improvement strategies and assist inventors with making informed decisions on whether to proceed with an application, based on chances for success as well as overall cost based on expected issues within the patent procesution process. 

During the patent prosecution process, a patent examiner will conduct his/her own thorough search to determine whether the subject invention or anything similar already exists.  This is called prior art and is added to the patent proecution record as prior, similar inventions that must be overcome.  With a proper patent search performed just prior to filing an application, such prior art identified should not be a complete surprise.  Additionally, having knowledge of such prior inventions and properly disclosing them at the application stage will both help an examiner as well as help speed up the prosecution process.  Therefore, conducting a search before filing an application is a very important first step in the patent process.  

Reasons to Get a Patent Search Opinion Prior to Release of New Product

While it would not be feasible or cost effective for a company often putting out new products into market to get patent search opinions for every product, in some cases it is important. For example, if a company gets great initial feedback from potential retailers on a seemingly novel product and intends to mass produce it for sale, a quick search may be in order. Especially when a new product may seem like an improvement to an existing product of a competing company, a search could identify a potential for infringement prior to the expense of mass production and entering into reseller and distribution agreements that could result in a patent infringement claim at the end.

For more insights on patent protection, see our Patent Services Overview and Industry Focused Legal Solutions pages.