In Search of Prior Art

By Debby Winters

A question that is often asked by new inventors is:  should I do a prior art search before filing a patent application?  The answer, as in most areas of law and life in general, is that it depends. This is the first of 2 parts on prior art searches. In this post I will discuss why you should do a prior art search before preparing and submitting your patent application.  In the 2nd part I will discuss how to go about having a prior art search done.

For individual inventors and smaller companies including start-ups, I would suggest that you should do a prior art search.  Many larger companies have a number of scientists and technologists who are familiar with the technology and what their competitors are doing.  They can also absorb the potential risks of not doing a prior art search.  Most small entities and start-ups do not and cannot. Even so, a prior art search just makes good sense!

Many, if not most, new inventors are convinced that they are the only ones that have thought of the idea that they seek to patent.  They believe that they have had a flash of insight that no one else has had.  They may even do a bit of Internet research to convince themselves that they are in the clear and that there is no need to do a prior art search.  They are often surprised by the results when they do have a search conducted.

The risks of not doing a search are several.

First, and most importantly, if you plan to commercialize or market the invention as a product or service, you don’t want to get slapped with an infringement lawsuit right out of the gate.  These suits are extremely expensive even if you don’t get hit with a large damage award.  There is a risk that you will not be able to afford to defend such a suit, and that all of your hard work in developing the invention, getting it through the prototype stage, and getting it to market would be wasted.  Usually, there is a significant monetary and time investment involved with these steps.  There is also a risk that a court could issue an injunction that would prohibit you from making, using, selling, or offering the invention for sale.

Second, conducting a prior art search prior to preparing a patent application may make prosecution of the application more efficient and cost-effective.  By knowing the closest prior art, the patent application and the claims may be prepared more strategically to take advantage of areas of patentability.  Claims may be prepared that get close to the prior art without encroaching on it.  It may be possible to develop arguments and strategies for convincing the patent examiner that the invention is non-obvious.

You may find that the invention needs to be reconfigured to “design around” patents that are found.  This could add to the value of the invention and potentially give you a competitive advantage.  You may find, however, that someone else has a patent that directly prevents you from patenting your invention.  In such a case, you may determine whether to abandon your endeavor or seek to partner with or secure a license from the patent holder, or just to try get to market as quickly as possible.

The main disadvantages of conducting a prior art search are that it will cost some money and that any material prior art that is uncovered must be disclosed to the Patent Office during prosecution of any patent application that is filed for your invention.  The cost is usually not significant in the overall scheme of bringing a new product or service to market and preparing and prosecuting a patent application.  In fact, a good prior art search can make these endeavors more efficient.  Most patent applicants are looking for strong patent protection in which case it is not a disadvantage to bring prior art to the patent examiner’s attention.  This will permit the patent to be “vetted” over that prior art.

Should I file my patent application before the new law goes into effect?

By: Debby Winters

The answer to this question might be yes. If you have any of the numerous activities that will be considered “prior art” under the new law but which isn’t considered prior art under the current law, then you should file before March 16, 2013. The new law contains many provisions that dramatically expand the prior art the U.S. Patent Office can use to determine whether an invention is patentable in the United States. Currently, prior art includes evidence showing that the invention disclosed and claimed in the application was sold, offered for sale, or in public use more than one year prior to the filing of a patent application, but only if that activity occurred in the United States. Starting March 16, any sale, offer for sale, or public use the invention anywhere in the world more than one year prior to the filing of a patent application is considered prior art, rendering the invention unpatentable in the United States. If you are in a situation like this, consider filing a provisional patent application now. You are not required to wait a year before filing the utility application but if you file before March 16, 2013 you can claim a priority date under the current system rather than the new system.