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, an invention must meet specific patent requirements for an application even to be considered. 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 they have envisioned isn’t already on the market, it must automatically meet said requirements. But, 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.
Source: The University of North Carolina at Chapel Hill
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 filed are prosecuted successfully.
Source: Patent Cooperation Treaty Yearly Review 2018
The journey from the conception of an idea to the grant of a patent can often be laborious, time-consuming, and expensive. Therefore, it makes sense to start by searching for prior art to get an idea of what technology already exists. This will enable the inventor to decide whether investing further in the invention is feasible.
Apart from the distinct advantage of making sure that no existing intellectual property will be infringed upon, there are additional benefits to conducting a patent search.
Avoid Costly Investment Decisions
Considering that filing a patent application is more costly than conducting a patent search, going ahead with filing a patent application without identifying if the invention meets the requirements for patentability does not make business sense. Furthermore, it could end up costing more in the long run if the costs involved in submitting multiple applications are taken into account.
It’s always better to learn beforehand whether a similar or identical invention has 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 Search 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.
Oftentimes, companies that want to invest in a technology that has already been patented might bring the current patent holders into litigation, with the sole purpose of getting the patent(s) reviewed and possibly, invalidated.
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 meticulously reviewed — meaning that the original patentee could end up losing the patent protection completely.
Gain a Competitive Advantage
One of the most intriguing advantages of performing a patent search — as it applies to a broader scale — is reviewing pending patent applications or existing patents. This activity can provide the inventor with valuable 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 also be created using data obtained through a patent search — are particularly useful in this sense as they can offer an accurate visualization of a competitor’s R&D expenditure and diversification.
Source: The Patent Portfolio: A Strategic Management Tool by Garcia, E.
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 further on down the road.
To find out more about conducting a patent search and to discover more about the most innovative patent search tool on the market, visit InQuartik today for a free trial!
