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: