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Do I need a Patent Search?

posted on 24.4.10

Despite concurring emphasis by most IP practitioners, many inventors still take the unwise plunge to apply for a Patent or Trade Mark, solely and without commissioning any form of Professional Search. Sometimes, if the inventor has extensive knowledge on conducting searches accrued through practical experience spanning many years, they may get away with it. But most times the consequences can be devastating.


There are many reasons why an inventor may decide not to commission a Professional Patent Search, but one of the most common reason is that of cost. While some public libraries provide Intellectual Property research services at reasonable cost, most professional Patent research providers use proprietary software in the form of one or more subscription databases. This tends to drive costs upwardly, and may appear superfluous to smaller entities or individuals who do not have a set budget for IP protection.


In order to get value for your money, inventors should take their time to shop around for the right provider, looking at indicators such as particular expertise of the Searcher (for example what constitutes most of their workload: is it bio-chem or mechanical subject matter?) and align themselves with a search provider who has experience in their particular field. If you have more than one invention, try and request a free search so as to view the scope of their searches. Further, if one of your largest competitors is based in a particular jurisdiction or if your largest market is in a country where English is not one of the first / official languages, it is important that you request a search specifically targetting that jurisdiction (and performed in that language) because there is always the likelihood that a competitor would have filed applications in that region alone, in a language other than English.


We often encounter inventors who claim that their invention is "totally new" and that "there is no other product like it anywhere else in the world", but within a few minutes of beginning our pre-filing searches, it quickly becomes apparent that prior disclosures claiming substantially the same thing (and to an alarming extent) exists...


Thus, the consequences of filing without a search can be costly because the inventor is then forced to either modify their invention or shelve aside their idea(s) altogether, incurring further expense. Meanwhile in the midst of this panic, there may be disgruntled investors (or business partners who have a stake in the business) to deal with; prototype developers (or manufacturers) who have billed for work done to the first specification and the inevitable legal expense of having to make a fresh application and restart the whole process from scratch. Furthermore, if the prior Patent right is in force within the jurisdiction you intend to trade, and you have already began manufacturing, you may find yourself on the verge of infringement. But most frustratingly is dealing with novelty / obviousness objections if a Patent Office cites your initial filing as anticipating your subsequent application.


Inventors should always go through the recommended invention life cycle that minimally includes a Professional Search before filing an application as this could could save them time and money.


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