When discussing the fundamentals of patent law with potential clients, we are often asked whether it is necessary, and whether it is a good idea, to conduct a patentability search.
The bottom line is that there is no requirement to conduct a patentability search before filing a U.S. patent application. However, in most cases, it is a very good idea to do so.
Depending on the technology, a basic patentability search will typically cost $750-$2,000. We use the term “basic” because this type of search does not cover all documents in all languages throughout the world. Instead, it is a cost-minded approach intended to give the client “the biggest bang for their buck.”
A basic patentability search will typically include a search of issued U.S. patents, published U.S. patent applications and PCT publications — and sometimes a quick Google search to uncover products not disclosed in patent literature and products for which a corresponding patent applications has not yet published. (Occasionally, for certain technologies, there is a need to search academic publications and other types of non-patent literature.)
While a basic search is not guaranteed to uncover every document that could weigh in on the question of patentability, if carried out by a qualified firm or practitioner, it will undoubtedly provide you with valuable insight about the patent landscape surrounding your new invention and your chances of obtaining a patent. (We emphasize the word “qualified” because some searchers are better than others. Before hiring a firm to conduct your patentability search, be sure to understand their search methodology. Most qualified firms, like us, use the WEST system which accesses the same database used by US examiners to examine your patent application.)
There are many good reasons to perform a basic patentability search, but in our experience, there are at least two primary reasons to do so:
1. A basic patentability search can save you a lot of time and money (and heartache) down the road. Everyone knows that filing a patent application, and seeing that application through to issuance, are expensive propositions. So ask yourself …would you rather find out now — or later — that you’ve made a good investment? That is, do you want your answer after you’ve spent $1,500, for example, on a patentability search, or after you’ve spent $10,000 … $20,000 … or more on a patent application and its ensuing prosecution?
2. If, after obtaining the results of the patentability search, you decide to file a patent application, you can rest assured that the quality of the application will be better as a result of the search — that is, assuming (a) the person drafting the application conducted the search or has access to the search results; and (b) the search was conducted by a competent firm or practitioner. Armed with general knowledge about the prior art, and often a specific understanding of one or more significant prior art references, the drafter will have a much better idea of what to include in the application — and just as importantly, what not to include in the application — to give the best possible chance of success.
Thus, while there is no requirement to conduct a patentability search before filing an application, we believe it is a very good idea to do so in the vast majority of cases if you consider the overall expense of drafting, filing and prosecuting an application.
The preceding discussion is intended for informational purposes only and should not be construed as legal advice. Please contact one of our attorneys to learn more about patentability searches or any other aspect of intellectual property law.
