One of the first decisions that clients are faced with in the patent process is whether they should have a patentability search done. It makes sense, after all why not learn what prior art we will be confronted with before beginning the patent process. Unfortunately, the decision is not that straightforward. Here is some information about the pros and cons of a search to help guide you in that decision.
First, what is a patentability search? A patentability search is a search designed to find prior art that might present an obstacle to a patent issuing on an application. I.e., it is a search designed to discover whether others have produced a product or products that would prevent a patent application from issuing. I can perform a patentability search and send you the results or I can perform the search and then let you know how they will affect patentability (called a “written opinion”). A patentability search is related to, but not the same as, a freedom to operate search which is looking for patents that a product may be infringing.
Second, a patentability search is not required. As a matter of fact, many clients elect not to perform a search.
Here are some pros and cons of a search:
- It allows us to learn SOME of the prior art. As noted below, there is some prior art that cannot be located no matter how extensive the search. However, learning some of what is available as prior art is often better than not learning anything at all.
- It may save the filing cost if prior art would preclude a patent. This is by far the biggest benefit of a good search. It can save a lot of money. However, it is important to note that this rarely happens. This is because if there is something that is exactly the same, most clients find this before beginning to produce the product and give up. I.e., the fact that someone is even contemplating a patent often means that they were unable to locate the prior art. That means that it is fairly rare that the search results mean that no application is filed.
- It allows us to adjust the scope of patent protection to overcome possible rejections. This case is far more common. By locating the prior art, we identify what is new and what is old and can make sure to focus on the elements that are most likely to lead to getting the patent issued. However, this is often information that is going to be included in the patent anyway. So one strategy is to skip the search and allow the USPTO to respond to the application and then adjust the scope of protection. Because this is almost always necessary anyway whether the search was initially performed or not, the search does not necessarily save effort or money.
- The cost is relatively low.
- Results of the patentability search must be turned over to the USPTO. That is, we must inform the USPTO of every reference that we locate. This normally is not a big deal, but occasionally the discovered references are close but they lead the Examiner to a certain mentality that leads to problems down the road. I.e., it encourages the Examiner to think of the application in terms of the prior art, rather than the improvements provided by the application. This can lead to problems in the application process that must be overcome later on.
- Necessarily, some art is missed. This happens for many reasons but there are two big ones: 1) the patentability is necessarily of limited scope. If it was not, costs would balloon quickly. You could literally spend hundreds of thousands of dollars and still not get a comprehensive result.2) Patent applications are normally not published for eighteen months after they are filed (and applicants can submit a non-publication request in some circumstances, which means nothing is published until those applications issue as a patent, if they do so).Because newer art may be the most relevant, this can be a big problem.
So what is the best course of action? My recommendation is that if the client believes (for example, because of an Internet search, including Google patents) that there are references that are close or a lot of results that seemed relevant, that is when they should contact me and we should do a patentability search. However, if there is not anything close, then the patentability search can be skipped.
In addition, I recommend waiting for the patentability search when filing a provisional application until the non-provisional application is being prepared. By waiting, you can allow more applications to be published and get better search results.