Why Inventors Should Perform a Patent Search
Inventors often wonder if a patent search is required before filing a patent application. Performing a patent search is a prudent step in the patent prosecution process because it can uncover prior inventions (known as prior art) that either exactly or closely resemble the inventor’s concept. A patent search also provides a level of assurance that the inventor does not waste time and money investing in research and product development. Accordingly, a patent search allows inventors to quickly pivot and modify inventive concepts and competitive advantages after discovering that prior art would prevent inventors from obtaining a patent.
Drawbacks of a Patent Search
A patent search does not guarantee that all existing prior art was reviewed because a pending patent application may not have been published, meaning a patent search would not uncover such materials. Additionally, a patent search would not capture the appropriate elements required to uncover the prior art because the search criteria were too broad or incorrect.
With over eleven million patents in existence and prior art available from all corners of the earth, it is impossible to determine whether all such prior art is reviewed. Additionally, the United States Patent and Trademark Office (USPTO) will likely identify prior art not identified in the best patent searches performed by patent practitioners, patent search companies, or inventors because the USPTO has access to larger databases or information not readily available to the general public resulting in a prior art rejection.
Inventors are encouraged to do a patent search prior to filing a patent application because it is a low-cost and prudent step that may avoid spending unnecessary time and money investing in research and product development and in applying for a patent when prior art that is discovered early in the patent prosecution process. However, even with the best search, inventors must be aware that it is impossible to uncover all prior art because pending patent applications are not typically published and because the USPTO has access to databases or information that are not readily available to the public that would allow inventors to uncover such information.
Knowing this information upfront will help inventors and patent practitioners align on patent prosecution and business objective goals and manage expectations on whether a patent application will be granted or rejected by the USPTO.Fargo Patent & Business Law is an intellectual property and business law firm. We are always happy to talk to you if you have questions about trade secrets, copyrights, trademarks, patents, or other business law issues; serving Murrieta, California and Fargo, North Dakota