Prior Art Searching
Should You Do A Prior Art Search?

Prior art search - should you do your own ?

There are a variety of prior art searches. You can search patents only, or all literature before the priority date of your application.  Geographically you can confine the search to the US, or go worldwide.

You will find that there are contrary opinions on this subject. Particularly among small business people the additional cost of doing a good prior art search is a problem when they are just beginning to pursue a patent. 

We believe getting a patent search done before pursuing a patent is crucial. But we also recognize the cost issue and understand the rationale some use in recommending that you don't spend that money up front. We also understand the rationale - we just don't completely agree with it.

So let’s talk a little about how you might consider dealing with patent searching if you are cash constrained in the beginning. We never recommend  that you skip the search entirely and go for the patent. But we will talk about how to keep the cost of searching down under different scenarios. Before we do that though let’s talk a bit about why we think a good search is crucial.

Here are three important reasons:

1) The overall cost of getting a patent is expensive. Before you spend the big bucks you should get the best information you can as to the validity of your patent claims. It's like a poker game, you can ante a little up front to see another card, then only bet more if you get a positive result.

2) Your patent practitioner (attorney or agent) should know the closest prior art before drafting claims. He or she cannot do that without a good prior art search.

3) If you have never read competitive patents you will be very surprised how much you can learn - and how many good ideas you can come up with just from reading well written patents. Of course not all patents are well written - but that is another story.

Having said that we still need to explore cost effective ways to do a search. Whether it is international in scope, a US only patent number search, or even an international patent search. There are online patent search tools available that will enable you or your company to do their own search. We can point you to some of them – and some of them are free.  We will be telling you where they are and how to use them, or how to find a patent search service. Many of the online patent search services are free. 

But be aware that your attorney or agent may have access to professional searchers to do this for you. We certainly do. And they have software that enables comprehensive prior art searches globally. There are sometimes compelling reasons to use this approach. And your patent attorney or agent can lead you to that type of search, and provide competent analysis to the results.

Types of Searches

There are also different types of searches and they vary in cost and complexity. One example is called a patentability search. Here you are basically trying to determine if your inventive concept can be patented. The search is aimed primarily at novelty - meaning are there patents out there that anticipate your invention, making it very difficult for you to get a strong patent?

Sometimes people will ask instead for a freedom to operate search. They are not sure they want a patent but are concerned about whether they are free to operate. The basic question is - will my invention infringe any known patents? This involves a different skill set. In a patentability search you are examining the entire specification of the patent - in a freedom to operate search you are reading claim language. Because you can't infringe a patent - you can only infringe claims. And some folks are simply not skilled at interpreting claims - and don't clearly understand what constitutes infringement of a claim.

A much more serious and expensive search is done when you are in the middle of a patent infringement lawsuit. As you know an infringement lawsuit can be very expensive - especially if you are being sued for infringement and could lose. The first line of defense in this situation, before trying to prove you do not infringe, is often to try to prove that your opponent's patent is invalid. So you spare no expense to search the entire planet to find some prior art that the patent office missed.

A key first question - how can be sure you will find all the important prior art? The simple answer - you can’t. The world of prior art is huge. Remember - it is everything ever published before your priority date. It is not just patents. Although many searches tend to focus on patents. But the academic literature is also prior art and it can be important.

So in reality your goal is not to absolutely ensure you find all the prior art - you simply cannot do that without doing massive searches. Rather your goal is to significantly reduce the chances that you are trying to get a patent in the face of obvious killer prior art. And to do that with an affordable search. Just recognize that searching is as much an art as a science. 

In some articles under development we will be covering what search engines are available and we will discuss some good strategies for conducting a meaningful search – domestic or international.

Again - if you need more information please ask.

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