The Role of Online Patent Search in Patent Success - iPNOTE
This website uses cookies. Learn more.
ACCEPT
Home   Blog   The Crucial Role of Online Patent Searches in Patent Application Success

How to start?

1
Within minutes, create a request with an AI assistant and receive offers from dozens of local IP attorneys
2
Review offers, compare them, and select the most suitable option. Complete your transaction securely
3
Stay informed on the progress and communicate with your attorney through the platform until the process is complete
Start protecting NOW

The Crucial Role of Online Patent Searches in Patent Application Success

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

2. Case Studies and Examples

3. Benefits of Conducting a Patentability Search

4. Step-by-Step Guide

5. Common Misconceptions

6. Conclusion

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.

 

***

 

The iPNOTE platform features more than 700 IP law firms that cover more than 150 countries, so you can always find the right direct service provider using our flexible filtering system.

 

Conduct the first AI patent search for free now. 

 

Use our AI Assistant to start protecting your IP.

 

Sign up for free, and we’ll help you solve any IP-related problem.
 
Unlock the potential of your designs with ease – explore the UK design register and australian design search. Comprehensive protection and accessibility at your fingertips.

Other posts

Utility Model Registration in India: Opportunities and Challenges
How to Register a Trademark in Israel: Requirements and Costs Explained
Why Design Registration in Bulgaria is Essential for Creators and Businesses
Comprehensive Guide to Trademark Registration in Cyprus: Protect Your Brand with Confidence
Design Registration in Lithuania: Your Gateway to European Markets
Navigating Brazil’s Updated Transfer Pricing Rules for Royalties
Patent Registration in Mexico: Key Aspects and Benefits
A Deep Dive into the Pros and Cons of AI Search Tools vs. Manual Methods in IP
Trademark Registration in Latvia: Key Steps and Requirements
Securing Your Design: A Guide to Registration in Italy
Entertainment Law Essentials: Protecting Creativity and Ensuring Fair Practices
Design Registration in the UK: The Legal Landscape, Insights and Tips
Trademark Registration in Singapore: Understanding the Costs and Fees
Design Registration in Greece Explained: From Concept to Protection
Understanding the Difference Between TEAS+ and Regular Trademark Applications in the US
The Journey of Patent Registration in China: Capitalizing on Creativity
The Ins and Outs of Patent Registration in Lithuania: What You Need to Know
Patent Annuities in India: Maximizing the Patent Value
Patent Registration in Italy Demystified: Master the Process
The Ultimate Guide to Amazon Brand Registry and Advanced Tools for Brands
Unlocking Trademark Registration in Greece: Essential Steps & Insights
Trademark Registration in Lithuania: Your Gateway to Legal Protection
Qatar Trademark Registration Essentials: A Must-Read for Businesses
Taiwan Trademark Application Made Simple: A Step-by-Step Guide
Knockout Trademark Search Tool: Boost Your Strategy With iPNOTE
Bulgarian Trademark Tactics: Empowering Businesses through Registration
AI vs. Attorneys: Unveiling the Best Approach to Patent and Trademark Searches
Track, Manage, Succeed: Navigating IP Rights with iPNOTE
Trademark Registration in Estonia: Protecting Your Brand’s Identity
Empowering Your Business: The Benefits of Trademark Registration in Jordan
Unlocking Growth: Why Startups Should Choose Brazil’s IP Landscape
Designing Success: A Deep Dive into Kuwait’s Design Registration Process
Intellectual Property Protection for Startups: Innovate, Secure, Conquer
Ensuring Brand Integrity: The Importance of Trademark Registration in Italy
Trademark Registration in Bangladesh: Key Insights for Success
Trademark Registration in New Zealand: Essential Insights for Business Owners
Unlocking Trademark Meaning: A Comprehensive Guide for Business Owners
Protecting Your Vision: Design Registration Essentials in Saudi Arabia
Navigating Patent and Trademark Searches: Manual vs. Attorney-Led Approaches
Trademark Registration in Papua New Guinea: Online Process and Foreigner’s Perspective
Navigating the Intellectual Property Seas: A Guide to Effective Portfolio Management
Trademark Meaning in Denmark: A Definitive Guide to Brand Identity
The Design Registration in Spain: Ink, Pixels, and Protection
A Guide to Design Protection in Jordan: Innovate, Register, Thrive
The Roadmap to Successful Design Registration in Egypt
Unlocking Business Success: The Invaluable Role of a Comprehensive Trademark Search
From Application to Registration: Mastering Trademarks in Oman
Navigating Design Registration in Bahrain: A Comprehensive Guide for Applicants
Trademark Security in OAPI: A Comprehensive Registration Manual
Mastering Design Registrations in India: From Concept to Protection
Beyond the Northern Lights: Unveiling the Trademark Registration Process in Norway
Trademark Registration in Morocco: From Search to Success
EPO Search Fee Refunds: A Strategic Perspective on Luxemburg Patents
Decoding Design Registration: A Deep Dive into Australia’s Intellectual Property Landscape
An Overview of Trademark Registration Requirements in Argentina
Design Patents vs. Utility Patents: Understanding the Differences in the USA
Design registration in Serbia: Everything You Need To Know
Vietnam’s Patent Registration System: Key Considerations for International Applicants
Unlocking the Future: an AI-Powered Tool for Patent Search Excellence
iPNOTE’s Black Friday: Empowering Your Business with AI Solutions
The Ins and Outs of ARIPO Trademark Registration: A Complete Guide for Applicants
From Idea to Granting: The Process of Patent Registration in Saudi Arabia
Get Ahead of the Competition with Our AI Trademark Search Tool
Step-by-Step Guide to Trademark Registration in Serbia: From Search to Registration
Protecting Your Design in Iran: A Guide for Applicants
Securing Your Innovations: The Process of Patent Registration in Malaysia
7 Most Popular Questions about Accelerated Patent Examination in the USA
Why Registering a Trademark in Spain is Important
Design Protection Made Easy: How to Register in Vietnam
Navigating Trademark Registration in Egypt: A Complete Guide
Maximizing Protection: Trademark Registration in The Republic Of Armenia
Design Registration in the UAE: A Comprehensive Guide
Designs in Germany: A Helpful Tool for Artists and More
Strategic Trademark Registration: Insights from a Madrid System & Direct Filing Comparison
Trademark Registration in Mexico: What You Need to Know
iPNOTE: The Game-Changing Platform for Protecting Your Intellectual Property
The Pitfalls of A Re-Brand: Why It Can Be Dangerous to Change Names
Protecting Your Inventions: Why Germany’s Utility Model System is Worth Considering
Finding a Foreign IP Provider through iPNOTE: A Step-by-Step Guide
Understanding Trademark Search in Indonesia: Tips and Tricks
Finding the Right Attorney Made Easy with Technology Areas
Case Study: From $1,320 to $18,285: The Mystery Behind Patent Service Prices Unraveled
How to Get Offers Quickly and Optimize Your Daily Work
Patent Landscape in India: An Analysis of Trends and Opportunities
Utility Model Registration in Brazil: Everything You Need to Know
Trademark registration in Peru: An Essential Guide
Trademark registration in Germany: A Comprehensive Guide
Patent Cooperation Treaty (PCT): How to File a Single Application to Get Patent Protection in Multiple Countries
5 Lifehacks You Should Know Before Filing a Trademark in Turkey
Securing Your Brand on Amazon: Amazon Brand Registry with iPNOTE
Set up Stripe Account: How Get Payments via iPNOTE
General workflow at iPNOTE: How to Work on a Global Marketplace
Patent Registration in Australia: What You Need to Know
Trademark Registration in the Republic of Korea: Tips and Recommendations
Industrial Design Registration in Turkey: What You Need to Know
Trademark registration in Brazil: Everything You Need To Know
Auto Pricing: How to Set it Up and Attract Clients
Trademark Registration in Japan: Essential Information
The Ultimate Guide to Trademark Registration in Canada
An Offer Confirmation: What to Do When You’re Ready to Start
Case Study: How We Filed Our Client’s Designs in 5 Hours in China!
AI and Machine Learning Patents in Brazil: An Overview
Trademark Registration in the UK: An Essential Guide
Patent Registration in Japan: Essential Information
Your Public Profile: How to Be Promoted in Attorney’s Marketplace
Trademark Registration in Australia: Everything You Need to Know
Patent Registration in the Republic of Korea: A Quick Guide
Trademark Registration in Thailand: Essential Guide
How to Initiate and Complete Working on the Project
A New Client’s Request: What to Do When You Get an Order
Design Patent Registration: A Comprehensive Guide
Industrial Design Registration in Brazil: Everything You Need To Know
Industrial Design Registration in Indonesia: Essential Guide
Patent Registration in Canada: A Quick Guide
Registering a Design Patent in China: All You Need to Know
Trademark Registration in Hong Kong: How It Works
Design Patent Registration in the US: What You Need to Know
Utility Model registration in China: A Quick Guide
Obtaining Legal Trademark Protection in Poland
Trademark Registration in Indonesia: A Quick Guide
The Process of Utility Patent Registration in the USA
Trademark Renewal and Validity in the US
Bases for Applying for a Trademark in the USA
Registration of a Utility Patent in the US: What You Need to Know
Trademark Registration in the US: A Comprehensive Guide
Trademark Registration in Malaysia: Essential Information
Trademark Registration in Turkey: What You Need to Know
Trademark Registration in Iran: A Quick Guide
Case Study: How iPNOTE Saved $184K for a CleanTech Company
Trademark Registration in Saudi Arabia
Patent Agent vs Patent Attorney: Understanding the Differences
Trademark Registration in The UAE: A Quick Guide
Trademark Registration in India: How it Works
Trademark Registration in China: What You Need to Know
Trademark Registration: Everything You Need to Know!
Patent Registration: Everything You Need to Know!
Patent Registration in Japan
Cyprus IP Box Regime
We Are Hiring: Marketing Director!
5 Steps to Register an EU Trademark
12 Easy Ways to Save Money on IP
How to Register a Trademark in the US
How to Register a Patent in China
How to Select an IP Attorney
How to Register a Patent in Singapore
Why IP Management Automation is Key for Successful Global Expansion
Registering Patents in the US from Abroad
How to Register a Patent in the EU
We Are Hiring: Sales Manager Wanted!
What to Know Before You Start Protecting Your IP Globally
How to Cut Costs on International IP Registration
We Are Hiring: Project Manager Wanted!
How to Cut Down 13.553 € on IP Registration?
How Technology Is Changing The Global Intellectual Property Industry
Recap: How limited IP Waiver Could Solve Our Pandemic Vaccine Problems
Why do You Need an IP Management Platform?
Conduct a global AI search in 1 min!
START FREE AI SEARCH