When should I do a patent search?
A reasonable question but one that does not have a definitively answer that applies across the board.
Deciding when to get a patent search largely depends on the purpose of the search. Typically, inventors will seek a patent search once they have an invention that they think is worth patenting. Sometimes inventors will not have an invention that is not fully fleshed out but they want to get a sense of the patent landscape to determine whether it even makes sense to continue the project and whether there may be some available space that they could target.
Starting with Why
These are two of the main purposes for getting a patent search, so the first step is to determine why it is that you want a patent search.
If you are looking for a patent search that will give you an idea about the inventive landscape and whether any inventive space exists, then you will want to do the patent search early in the process.
To start, you should do an initial patent search yourself to inform yourself first. However, there is a real risk associated with only relying on a search performed by yourself and not a patent attorney. Still, doing your own search is free, except for the investment of time, so it is a logical place to start.
Imitation is the sincerest form of infringement.
Typically, an inventor wants a search to determine whether the invention they have come up with is one that is likely to be patented.
For small startups and solo inventors, to start down the patent path, I recommend filing a provisional patent application. You can either do a search before the filing of a provisional patent application or after the filing of the provisional patent application but before the filing of the nonprovisional patent application.
The cost of a patent search and patentability determination by a patent attorney can range from $1,000 to $3,000, depending upon the technology involved and the level of analysis provided. To prepare and file a provisional patent the cost is typically between $2,000 to $3,000, depending upon the technology and the complexity.
To patent or to search?
For inventors who find the cost of a patent search and filing a provisional patent application, I would recommend filing the provisional patent application to get the patent application process rolling and to obtain “patent pending” status. As you are traveling along the road to a nonprovisional patent application, you can then have a search done as well.
For technology or product areas that are very crowded with lots of similar inventions (such as every doctor wanting to patent a golf club) performing a search prior to filing even a provisional patent application may be recommended.
Does it make dollars or cents?
The reason not everyone chooses to do a patent search first is because the cost of a search can be a significant investment, even if the cost of the patent search is less than the cost of preparing and filing a provisional patent application.
The primary benefit of a provisional patent application is to record your invention with the patent office to establish the date of your invention. Some will choose to file a provisional patent application as quickly as possible and not wait for the completion of a patent search in order to establish as early of date of invention as possible.
Note, provisional patent applications are never examined by the Patent Office. For startups with a reasonable budget, the startups may choose to have a search performed and file a nonprovisional patent application to get the examination queue.
Optimal versus practical
So far the answer as to whether to have a patent search performed is based on the typical decision by inventors, not the optimal decision.
Doing a patent search first before any patent application is filed is always the best course to follow if funds are available. By doing a patent search and obtaining guidance from a patent attorney, you will be able to determine whether it makes sense to move forward with a patent application and learn what features to focus your patent application on. In an ideal world, everyone would start with a patent search and then file a provisional patent application or a nonprovisional patent application depending on what stage their invention has progressed to.
A patent search first enables startups and inventors to explain, from the earliest stages, their invention in a way that accentuates and focuses on the novel features of the invention and the important differences that their invention has over prior inventions (prior art).
There is no doubt that doing a patent search prior to filing any patent application is the best approach. Of course, a lack of funding can necessitate different choices. For startups and inventors whose budgets require cutting corners, the best fall back plan is to do as much searching on their own and learn as much as they can about the patent process.