Is conducting a patent search a compulsory step in the process?

Look before you leap, search before you patent

Whenever you take on a new task, you will often hear people advising you to  “look before you leap”. This is true not only for new tasks but also for important tasks, particularly when you are planning to patent your invention.

That’s why, patent professionals always advise inventors to “look before you leap, search before you patent”. This is because patenting is a key process that must be completed in a simple and clear manner to maximize business benefits. The overall general process for patent registration includes the following steps:

1. Patent Search
2. Patent Application Drafting
3. Patent Filing
4. Patent Prosecution
5. Patent Maintenance

Whenever you file a patent application, it goes through the above steps. Among these steps, drafting a patent application, filing it in a patent office, responding to prosecution and monitoring and managing the activities that occur after the grant of your patent are essential for successful patent grant and protection.

But a patent search is often considered as optional by many inventors. However, if you want to go through the patenting process in a cost-effective, quick and smooth way, then taking up patent search is important. Although it may seem like an additional step in the patent process, conducting a patent search can actually help you save time and money in the long run by identifying potential issues early on and enabling you to make informed decisions about pursuing a patent.

What is a Patent Search?

Patent search or patentability search is a process of searching for existing prior art to determine whether the essential technical details of your invention already exist in the public domain in any form. The concept of your invention can be either in the form of patents, published patent applications, and Non-Patent Literature (NPL) which includes videos, articles, journals, books, blogs, products and news etc. You can conduct a simple and quick patent search on your own  using free databases like Google Patents, Espacenet, and Patentscope. For a comprehensive and accurate patent search, you can also approach an experienced patent professional.

Patentability Criteria:

Patent search is typically conducted to determine whether your invention meets the patentability criteria by identifying  existing patents and NPLs (also known as prior art) that are similar to the concept of your invention. The grant of your patent application mainly depends on how your invention satisfies the patentability criteria. The patentability criteria are given below:

1. Novelty – This means your invention should be entirely new and should not be present in any form across the world
2. Non-Obviousness – This means your invention should not be known to a person who has skill in the particular technical field in which it broadly falls
3. Usefulness – This means your invention should have industrial applicability i.e., it should be capable of being made or used in an industry and have a useful or practical application

Once you file the patent application at the patent office, the Examiner thoroughly examines it to determine whether the patent application satisfies the patentability criteria. In addition to the patentability criteria, there are also other factors which will be considered by the Examiner before granting a patent. These factors may vary for different jurisdictions.

Is it mandatory to conduct a patent search?

A common question among inventors is “Why should I conduct a patent search?”. Of course, you can also directly file a patent application for your invention without conducting the patent search. But if you file your patent application directly without conducting a patent search, you may face the following issues:

1. Once your patent application gets published, it is accessible to public. If someone owns a product or  patent that  discloses a  similar concept of your invention, then that person may file an infringement suit against you.
2. At the time of prosecution, the examiner may come up with patents or NPLs that discloses a similar concept to that of your invention. In such a case, you would need to demonstrate how the concept of your invention differs from existing patents / NPL. If you fail to do this, then your patent application may be rejected / refused for grant.

The situations described above can result in a loss of time and money.

This is where the importance of conducting a patent search becomes evident. The list of patents that you retrieve from patent search can be used for comparing the concept of your invention. If the list of patents / patent applications and NPLs disclose a concept that is exactly similar or covers certain aspects of your invention, you may need to consider modifying your invention. If the list of patents / patent applications and NPLs does not disclose a concept that is closer to your invention, then you can proceed with filing.

So, conducting a patent search before filing a patent application has the following merits:

• The search results from the patent search give you an idea whether your invention is patentable or non-patentable
• Patent Search helps to identify unique differences between your invention and the existing prior art. Based on this, you can draft the patent claims accordingly and increase your chances of being granted a patent
• Conducting a patent search can save time and money in the long run by identifying potential issues early on in the patent process, before filing or prosecuting the patent application
• It provides an opportunity to explore ways to modify / improve your invention or find an alternative, if your invention already exists in public domain. This can help you to stand out from your competitors and increase the chances of securing a patent
• Patent search can also help you to avoid infringing on the intellectual property rights of others and reduce the risk of costly legal battles

To summarise, conducting a patent search is a crucial step in the patent application process. It is necessary to determine the patentability of an invention, avoid infringing on existing patents, and strengthen the concept of the invention before filing a patent application. While conducting a patent search is not mandatory, it is highly recommended as  a precautionary step,  as a patentability search can  save your time and money in the long run. You can perform the patent search on your own. However, it is always advisable to seek the help of patent professionals, as they possess legal and technical expertise to perform a thorough patent search. They also have access to subscribed patent databases that covers worldwide patents and publications. Their expertise and guidance can increase the likelihood of a successful patent grant and help you to avoid costly mistakes.