Importance of a thorough prior art search before planning a patent application
Conducting a prior art search is an imperative measure that must be performed prior to initiating the filing of a patent application. The fundamental objective is to discern any preexisting information or technology that may impact the patentability of the invention. It is crucial to note that a vast majority of products or innovations lack all the inventive and patentable facets. Therefore, the optimal strategy to undertake a prior art search is to initially pinpoint the “invention.” This may encompass the exceptional feature(s) of the product that imparts a competitive edge, such as the unique selling point (USP) of the product/technology. A comprehensive prior art search is a pivotal step that can assist inventors in circumventing replication, assuring patentability, economizing time and resources, mitigating the likelihood of litigation, and directing research and development paths.
Based on an independent study in the United States, the discovery of prior art for 70-80% of patents is attainable by any adept searcher, rendering such patents challenging to enforce and invalid. While it may be effortless to impugn the patent office for endorsing weak patents, a significant number of patent holders have not conducted a comprehensive search on their inventions prior to submitting them to the patent office. Several reasons account for this, including inventors rushing to obtain the priority date for their inventions or becoming emotionally invested in their inventions and failing to acknowledge the potential existence of prior art. Furthermore, some patent law firms and lawyers/agents may be cognizant that such searches may render the invention ineligible for patent protection, thus dissuading or not urging such searches. In such cases, the interests of the inventor and the law firm may not be congruent. Consequently, it is the onus of the inventor(s) to seek professional assistance in conducting a prior art search to receive a candid appraisal of their invention. A professional search, encompassing non-patent literature such as scientific publications and product specifications, is indispensable for achieving trustworthy results. In our experience, only a minority of inventors possess the requisite proficiencies and access to subscription-based databases to undertake such searches independently. Therefore, it is imperative to enlist the services of a firm to execute the search for a fraction of total expendature. Subsequent to conducting the search, it is imperative to reevaluate the novelty and non-obviousness of the invention relative to the prior art. A comprehensive prior art search constitutes a vital analysis before investing tens or hundreds of thousands of dollars in securing and sustaining patent(s) in one or more jurisdictions.
The patent acquisition procedure can be costly, involving various fees such as filing fees, examination fees, and attorney fees. Therefore, it is prudent to initiate the patenting process by conducting a comprehensive prior art search employing professional assistance. A thorough prior art search provides several benefits, including:
- Minimizing redundancy: Conducting a prior art search can prevent the unnecessary waste of finances and resources in patent filings and prosecution procedures by identifying the absence of novelty. As a result, R&D departments can effectively allocate their intellectual property budgets.
- Ensuring patentability: Prior art searches aid in determining the extent of patent claims by identifying the closest prior art. This exercise reduces the probability of encountering claim amendments and office actions, resulting in a quicker prosecution process. Furthermore, it functions as a due diligence process, reducing the risk of patent application rejection.
- Improving patent application drafting: Even if the invention is not proven unpatentable by the prior art search, it provides valuable information for patent application drafting. It aids in identifying relevant prior art and shaping the application to reflect it. For instance, highlighting advantages and improvements over pertinent prior art can strengthen the patentability of the invention.
- Reducing litigation risk: Prior art searches reduce the risk of patent infringement by ensuring that the invention does not encroach on existing patents or intellectual property rights.
- Enhancing R&D: A comprehensive prior art search can provide insights into existing technologies and solutions, enhancing R&D strategies.
- Finding collaborators: Search outcomes can assist in identifying the most suitable collaborators for projects and keeping up with the latest research advancements in the field.
- Identifying potential infringers: Observing and monitoring individuals or organizations that might infringe on the idea can help preemptively avoid infringement issues.
- Staying informed: Keeping track of the latest publications and research trends can aid in anticipating market shifts and emerging technologies.
Conducting a comprehensive prior art search is crucial before filing a patent application as it helps identify existing prior arts that may impact the patentability of the invention. A professional search is necessary to achieve trustworthy results, and it is imperative to reevaluate the novelty and non-obviousness of the invention relative to the prior art. A prior art search provides several benefits, including minimizing redundancy, ensuring patentability, improving patent application drafting, reducing litigation risk, enhancing R&D, finding collaborators, identifying potential infringers, and staying informed.
At Riahi Patents, we offer the services of a highly proficient team of technical domain experts to assist you in procuring an exhaustive prior art search report. Our team leverages their extensive experience of professional patent and non-patent search tools and acumen to identify and analyze prior arts that could potentially impinge upon the patentability of your invention. This report will provide you with a deep understanding of the strengths and weaknesses of your invention, enabling you to develop effective patent filing and research and development strategies. Our team’s extensive expertise in technical domains enables us to deliver customized solutions that are tailored to your unique requirements and specific industry standards.
