Filing for a patent is a substantial investment of time, money, and resources, making it imperative to ascertain the uniqueness and patentability of an invention before initiating the application process. One of the pivotal steps in this journey is conducting a patentability search. This comprehensive exploration not only helps in avoiding potential legal pitfalls but also ensures that inventors make informed decisions. In this article, we will delve into the significance of online patent searches before filing for a patent, the associated benefits, and a step-by-step guide on how to perform these searches effectively.
Contents
1. Explanation of a Patentability Search
3. Benefits of Conducting a Patentability Search
1. Explanation of a Patentability Search
Often referred to as a novelty search, a patentability search involves a thorough investigation to determine the novelty and non-obviousness of an invention. The search aims to identify prior art, which includes publicly available information such as existing patents, published patent applications, scientific literature, and more. Online patent searches, especially using tools like the iPNOTE AI Patent Search, play a crucial role in providing insights into the likelihood of obtaining a patent and highlighting potential obstacles during the application process.
2. Case Studies and Examples
Neglecting a patentability search can have severe consequences, leading to the rejection of patent applications and resulting in wasted time and financial losses. The case of Apple Inc. vs. Samsung Electronics Co. serves as a stark reminder of the legal battles that can arise due to patent infringement issues. We sought opinions from iPNOTE attorneys and clients to shed light on the importance of patentability searches:
Robert Fitcher, JET IP, Germany:
“Applicants frequently argue that for only a few dollars they can ask the patent offices to conduct a search after filing an application. So, why should they invest money into a patentability search before filing? A carefully executed search before starting to draft an application is important to become aware of the pertinent prior art. This helps in defining the scope of the claims to cover precisely what is not covered by the prior art and in formulating reasonable fallback-positions. Also, if the search reveals prior art so pertinent that the own invention seems no longer reasonably patentable, time and expenses can be saved for drafting and filing.”
Jerry Bridge-Butler, Baron Warren Redfern, the UK:
“A patent can only be granted for an invention which is both new and inventive over everything which has been thought of before. All patent applications are thoroughly examined to determine if this is the case, and only those inventions which are shown to be new and inventive are granted a patent. Therefore, anyone considering filing a patent application can perform their own pre-filing patent search first to make sure their patent application has a good chance of being granted. This will prevent time and money being spent preparing and filing patent applications for inventions which are not new.
Simple right? Well, unfortunately not. There are a number of serious issues to consider. Firstly, patent searching is expensive and time consuming. The information being searched is called the “prior art”, and comprises all earlier filed patent applications from any time before now, and from anywhere in the world. It can take a very long time to look through all the relevant documents. Searching for documents which show exactly the same invention is one thing, but the searcher also has to look for anything which is similar enough to mean the invention is not inventive. This widens the scope of the search enormously, and in some cases can make it effectively impossible. The amount of time it takes to perform a meaningful search, and hence the cost, can be as much as it would cost to prepare and file the patent application itself. If so, it would be just as well to do that instead, and to rely on the patent search the examiner performs as part of the application process. This way if the invention is patentable then you are also way further ahead in the process than if you had simply had the search done first and then had to prepare and file the application.
The cost of a patent search does depend on the technological area in question, and the nature of the invention itself. If the technical field is one where there is a lot of complex prior art, for example mobile phone technology, then the costs will be very high. If the invention is more niche, then the costs can be lower. It is also possible to pay more for comprehensive searches, and less for simpler ones. The nature of the invention will also determine what might be appropriate, as some inventions are rather obviously not going to be new, while others are clearly completely new. This is all something to discuss with your patent attorney, so you can settle on a strategy you are happy with. Many times it is better to just prepare and file the application and see what happens to it.
The second major problem with patent searches is that the only prior art which is actually relevant to the patent application itself is that raised by the patent examiner performing the search. The results of a pre-filing patent search and the application process search can be very different (and are often very different at different patent offices dealing with equivalent applications). The pre-filing search might not show relevant prior art the examiner subsequently relies upon, in which case it was a waste of time and money. The opposite can also happen, where a pre-filing search reveals prior art which appears relevant, but it is then not relied upon by the examiner. Therefore, one has to account for this variance, and accept that there are risks associated with the results of a pre-filing search.
The third major problem with pre-filing patent searches is that patent applications are not simple requests, to which the answer is either: yes you can have a patent, or no you can’t. They are much more complicated than that, and you are in fact engaging in a debate with the patent examiner about the scope of patent rights they are prepared to grant you. The scope of the invention in a patent application is defined by the patent claims, which come at the end of the application. Claim 1 defines in the broadest possible terms the technical invention for which protection is sought. You want your patent granted for claim 1 because then the patent will be broad in scope and you can use it to stop anyone using you broadly defined invention, regardless of whatever else they might be doing. Claim 2 defines an invention which falls within the scope of claim 1, but you introduce an additional technical feature so the scope of the invention is narrower than claim 1. Claim 3 defines an invention which falls within the scope of claim 2, but again another additional technical feature is added, so again the scope of the invention is narrower. You keep doing this down your list of sub-claims, each time defining an invention which might be patentable over the one before. By the end you have a string of claims, any one of which could be the patentable one. There might also be technical features disclosed in your patent description and drawings which are not in your claims at first, because you did not consider them relevant. During examination of your application the patent examiner might refuse several of your claims, on the basis of the prior art, but not others. You might also find there are features in your application which were not claimed, which you can then rely on to define something new. This entire process is something which cannot be anticipated by a pre-filing patent search. You might find some prior art which you consider to be highly relevant, and therefore do not proceed with your application, when in fact there could be various sub-features you could rely on to obtain a useful patent.
Therefore, whether you perform a pre-filing patent search or not it is not an easy or straightforward question to answer. You need to consider the costs, and compare them to the filing costs. You also need to be prepared for the results to not be that helpful or clear. If your invention comprises a lot of technical features which may or may not be patentable, and hence your application would have many claims in it, then a pre-filing search may be less effective.
In my own practice as a UK and European patent attorney pre-filing searches are only performed in about 25% of cases.”
3. Benefits of Conducting a Patentability Search
Online patent searches offer numerous benefits, including cost savings and the prevention of legal issues. Early identification of prior art empowers inventors to make informed decisions about proceeding with the patent application or modifying their invention to enhance its uniqueness. This proactive approach can prevent wasted investments in applications likely to be rejected and mitigate the risk of legal challenges down the line.
4. Step-by-Step Guide
Conducting an effective patentability search involves several steps:
- Gather all relevant information about the invention, including technical details, drawings, and descriptions.
- Utilize online databases, such as the USPTO’s database and advanced tools like the iPNOTE AI Patent Search.
- Analyze search results to assess the relevance of prior art and its potential impact on patentability.
- Seek professional assistance from a patent attorney or agent for a thorough search and accurate interpretation of results.
5. Common Misconceptions
One prevalent misconception is that patentability searches are unnecessary if an inventor believes their invention is genuinely unique. However, even confident inventors may be unaware of existing prior art, making a thorough search crucial for avoiding legal disputes and rejections. Additionally, the misconception that patentability searches are costly and time-consuming is debunked by the availability of efficient tools like the iPNOTE AI Patent Search, making the initial investment affordable and worthwhile.
6. Conclusion
In conclusion, online patent searches before filing for a patent are essential for inventors seeking to protect their inventions. These searches provide valuable insights into the novelty and non-obviousness of the invention, potential obstacles in obtaining a patent, and opportunities to differentiate the invention from existing prior art. By conducting a thorough patentability search, inventors can make informed decisions about their patent applications, avoid legal issues, and ultimately save time and resources in the long run. Therefore, it’s imperative for inventors to prioritize online patent searches as part of the patent application process.
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