Prior Art Search – Should A Patent Application Be Filed?
Here at ICIP Law, we often tell Inventors to do their own Prior Art Search first.
A Prior Art Search is an important step in helping the inventor decide whether to proceed with a utility patent application. With a Prior Art Search, you are trying to find patents, published
patent applications, other publications, products being sold, and any other item that may be used to prove that either a) the inventor was not the first inventor of this particular invention, or b) that
the combination of the prior art renders this particular invention a mere “obvious improvement”, and not worthy of a patent.
Using a combination of the most popular patent searching programs USPTO, Google Patents and Free Patents Online. You enter what you think are “key words” for your invention and see what patents and published patent applications come up. Start keeping track of them by number and “sort” by number for easy reference. Once you start getting duplicate results from all the search engines, you may have exhausted your searching abilities. You should also look for products similar to yours on the internet, and if your invention is a technical one, consult with the relevant trade, professional and scientific journals. If you found that someone beat you to inventing your invention by more than a year, perhaps you should pay for a consultation/patent assessement to confirm your suspicions and consider going with a design patent. If you think you still have a decent chance to get a utility patent, we advise you to consult a professional prior art searcher.
Turn to a professional. After you feel you have taken the prior art search to its limits, we urge you to have a professional prior art searching company do a prior art search. When you approach the company, make sure you know the price before you start, and give them all the patents, published patent applications, and other prior art you found. Most prior art searching companies budget a certain number of hours to a prior art search, and if you show them what you
found, they will focus their efforts on finding additional prior art, rather than reinventing the wheel by spending time finding what you already found. If you like, you can hire two different companies and see what each can find.
Prior Art Searches are not perfect and in no way guarantee the success of a patent application. Please read our article on Prior Art Searches (www.icipLaw.com in the “Education” section). Prior art from anywhere in the world can be used against your patent application (just as your published patent application can be used against any patent application in a foreign country). Don’t rely on the prior art search as a final determination of whether you will get a patent.
Instead, you should use the prior art search results as a general guide to what other inventions are out there, and proceed knowing that even if the prior art search discloses nothing, there is no guarantee that your patent application will be allowed.