To Search or Not to Search?
By: Kathryn Imeli
Senior Associate Attorney
You’re a solo inventor who just came up with a brilliant invention and you have scoured the internet to see if you are really the first person to come up with the idea. You become convinced that your idea is novel. Or you’re a technology executive in a large corporation, reviewing an invention disclosure form submitted by a team of inventors. The invention has high commercial significance to the corporation, and you are chomping at the bit to start marketing the idea. In either case, the decision must be made: “To search or not to search?”
Prior Art refers to an existing invention that is similar to your invention and a Prior Art Search finds products, inventions or concepts that are similar to what you’re looking to patent or build. Why is it important? Well, in short, it determines whether your invention is patentable. Overall, a prior art search should:
• Prove your idea to be new or original
• Review any other patents that exist in the field you are filing
• Prevent any possible infringement on anyone else’s idea or invention
• Determine the viability of your invention or idea
So, should you do it? Below are some considerations to help you decide whether to order a professional prior art search before pursuing a patent application on your invention.
Familiarity with field of art
How familiar are you with the relevant field of art? For example, large corporations may have sophisticated teams of individuals tasked with staying up to date on relevant technical fields, competitor product development, and market activity. Smaller companies or solo inventors may not.
Investment
Can you afford to? Rather, can you afford not to? Professional prior art searches are an investment. However, it is important to compare this relatively small investment with the lost cost of pursuing a patent application on an invention that is deemed unpatentable over novelty-defeating prior art. Other potential lost costs to consider include those associated with bringing a product to market only to receive a cease and desist letter shortly thereafter, and litigation expenses and/or damages involved in an infringement lawsuit over a prior art patent. While some companies may be in a better position than others to absorb these losses, a professional prior art search conducted before pursuing a patent application may help mitigate or altogether avoid these losses.
Insight into prosecution:
Do you know how to claim your invention?
Professional prior art search results can give insight into what prior art is out there that may be cited against the application during prosecution. This insight can help define the scope of the claims, design around the prior art, and promote efficient prosecution and quicker allowance of the application.
Although it is impossible for even the most seasoned professional prior art searchers to uncover every single piece of prior art that exists (for example prior art patent applications that have not yet been published as publicly available), professional prior art searches often prove to be valuable for inventors and applicants large and small.
We’re here to help. We work with our clients on prior art searches and tailored IP strategies to ensure that they are provided with the best IP protection. Contact us here for further information or to get started!