With the introduction of the America Invents (Leahy-Smith) Act a decade ago, the United States moved from ‘first-to-invent’ to a ‘first-to-file’ patent system. While it may be tempting to rush to the patent office to put your date-stamp stake in the ground, an important step in the process is a pre-filing or patentability search that will set your patent application on the right track and avoid pitfalls down the road.
A pre-filing or patentability search looks at the technical aspects of the proposed patent or invention disclosure and seeks to uncover existing prior-art that might anticipate the invention and thereby prevent it being patented due to it not being novel, or to it being obvious. While it might be counter-intuitive to actively look for similar inventions that might knock out your own, knowing what is already out there helps you to build a stronger patent that not only checks the boxes to get the patent granted more smoothly, but can also weather the storm in the long term.
Protecting your Investment
Some schools of thought might consider that research scientists and engineers working within corporations are very familiar with their own technology and surmise that they would already know if there was prior art out there inhibiting their ability to get a patent. This in turn might lead them to believe that there is no need to do a pre-filing search. This can come back to bite them in a few different of ways, either:
- The patent gets rejected due to the examiner citing prior art against them; or
- The prosecution process is severely slowed, getting weighed down in patent office actions requiring ongoing costly attorney fees; or
- The patent gets granted (an examiner has only limited time to do a search in the course of examining a patent and things can get overlooked), only to be challenged by a competitor down the road once even more resources have been sunk into capitalizing on the technology.
The cost of a pre-filing search is minimal compared to the time and effort involved in researching and developing your technology or invention. Plus, working with legal counsel and prosecuting and maintaining each patent within the patenting system can cost an estimated $20-40K or more over time, which is a hefty investment. That is just the beginning – if you want to utilize your new patent, there is a whole host of costs involved with your go-to-market strategy. Conducting a pre-filing or patentability search is the best insurance policy for helping to guide and protect your intellectual property and is worth every cent. Indeed, the search results will often help your patent attorney to write a more water-tight patent that stands up to scrutiny.
Types of Pre-Filing Searches and Costs
An inventor will often conduct some of their own searching of patent and/or literature resources during the course of developing their technology. A professional search firm provides a whole new layer of diligence, bringing subject-matter experts to the table who are highly-trained to uncover prior-art using specialist search techniques and skills developed over many years. These techniques are applied across a wide selection of worldwide patent databases and technology-specific scientific literature resources and can tap into multiple language documents that are not accessible to the inventors or researchers directly themselves.
Budget is an important consideration and a reputable patent search firm will work with the patent applicant and/or their patent attorney to determine the breadth and depth of a search that may be desired, whether that be a more general ‘knock-out’ search (typically costing several hundred dollars) to elucidate quickly if there is clear prior-art standing in the way, or whether the invention demands more robust searching that may cross over to a patentability/freedom-to-operate hybrid (typically costing around a couple of thousand dollars) covering worldwide or specific markets. Each type of search requires its own approach, and a trusted search firm will provide advice on different cost options to help you to decide which is right for you and your desired outcome.
TPR International, Inc. has a 25-year track record of providing patent and literature searches to leading corporations and law firms and has proven search experts across all technologies. Contact TPR today to discuss your search needs and we’ll be glad to help.