We get this question all the time from clients that are interested in obtaining a patent. The short answer is “No, but you probably should because it can save money, and it helps your patent attorney save you money.”
First of all, let’s clarify what we mean by a “patent search” in this post because “patent search” is somewhat ambiguous and is sometimes used to refer to a patentability search and a clearance or freedom to operate search. The purpose of a patentability search is determine if your invention is likely to be patentable. A clearance or freedom to operate search is conducted to evaluate whether your invention likely infringes on someone else’s patent rights. One or the other (or both) may be appropriate depending on your goals. Let’s look at why we recommend clients get a patentability search if they’re interested in getting a patent.
Why Perform a Patentability Search
A patentability search can save you money. You can only get a patent for a new invention; it can’t already exist. A patentability search looks for prior art – existing inventions anywhere on the planet – that could compromise or eliminate the possibility of getting your desired patent. The search also helps determine the breadth or scope of protection that might be available for your patent based on what you can claim for your invention in light of the prior art.
A patentability search gives us a clearer idea of what to include in your patent application, which will save us time and you money when we prepare and file your patent application. Much like a property map tells you where your property lines are relative to your neighbors, a patentability search and opinion can help you to learn the landscape of the prior art and provide guidance to your attorney who will draft your patent claims that avoid the prior art, but give you the broadest protection possible.
Without a patentability search, we submit the patent application based solely on your description of your invention. If there’s prior art that limits your patent rights, we have to amend the claims in your application. If your invention isn’t patentable because it already exists, you’re still responsible for the filing fee and the fees for your lawyer’s time. The cost of this search is usually less than half the cost of preparing and filing a patent application with the United States Patent and Trademark Office (USPTO).
How We Do a Patentability Search and Opinion
When we do a patentability search, we start with a detailed description of your invention and use that to create a rough draft of your possible patent claims. This helps patent search agent conduct a thorough search of the relevant prior art.
Our search agent then performs a search of prior art databases to find prior art that a USPTO patent examiner would find in a search. We compare our search agent’s findings in the prior art to your proposed invention in much the same way that a patent examiner would examine the patent application. From there, we craft an opinion that gives you guidance on whether we believe you can obtain a patent for your invention, and if so, what the scope of protection might be.
Please note, every legal situation is different and must be evaluated on its own merits. If you need help with your intellectual property needs, please send us a message. We have registered patent attorneys who are skilled in all areas of science and technology and attorneys licensed in Arizona, Connecticut, and New York. Venjuris PC can handle federal intellectual property matters in any U.S. state and assist with international matters. For even more information, be sure to connect with us on Facebook.
Post by patent attorney Michael Campillo, edited by social media attorney Ruth Carter.