Intellectual property, like any other property requires investment of resources, mainly in the form of time and money. Patent practitioners commonly come across inventors who firmly believe that there is nothing like their product in the market just because they have not seen something similar. However, this belief is often overturned when only a brief search in patent and/or non-patent databases reveals someone else had already thought of the same or similar idea before, but that idea might never have reached fruition for any number of reasons, such as lack of finance, lack of motivation, or bad timing. For this reason, we recommend that a search is conducted before investing too much time or money into an idea.
Why conduct a search?
The short answer is to discover how likely it is that an invention will be granted a patent.
It is important to note that applying for a patent can be a complex legal process that can cost a lot of money and involve a lot of time. For an inventor or applicant, what else could be more disappointing than finding out at a late stage of their application that the invention on which they have spent so much time and money is not new.
A prior art search takes only a short time and is inexpensive when looking at the bigger picture. It is a quick cost effective way to evaluate whether it is worthwhile applying for a patent. If documents are found that limit the chances for a patent, then the cost of a patent application has been saved. Even if you are certain that your invention will be granted a patent, a prior art search will lead to a stronger patent application, and a smoother patent application process.
It does not hurt to apply effort to discover what is already out there or see how likely it is that the invention will be granted a patent.
The Search Process
To perform a prior art search, one must establish how the invention relates to subject matter that is already in the public domain. A search of at least the main patent databases (consisting of millions of documents) should be conducted using key words and terms in order to locate documents that specifically relate to the invention. In most cases, it is also important to search through non-patent literature. Once relevant documents have been located, the next step is to compare the features disclosed in the documents or publications with the features in the invention. Finally, one needs to analyse this information to decide whether its worth taking the next step in applying for a patent.
Of course, many patent databases are freely available and an inventor can do their own search. However, the risk is that the search will not be conducted properly and key documents will not be found, or important details might be missed, or misinterpreted. If the search isn’t done correctly, it could make things worse in a long run. Therefore we recommend that you invest in having an experienced patent attorney carry out the search.
Can we really guarantee that we will find that "needle in the haystack"?
Considering the volume of publications that are out there, it is unreasonable and even impossible for a searcher to go through all of them. The quality of a search will depend on the time one allows for the search, how reliable the databases are, and how knowledgeable the searcher is.
Search results in patent databases are very much dependent on the veracity of the database(s). Also, in some cases there could be patent application(s) that have been filed but sufficient information for identifying such applications may not yet be available to the public in which case it will not be possible to locate the documents.
Performing a good patent search is an art that normally comes with one’s experience and technical knowledge. Serious inventors usually choose an experienced patent attorney or patent researcher to conduct such searches. Serious inventors also understand that allowing reasonable time and money for the search is an investment that offers long term benefit and cost savings.