Should I search for patents before I file my own?

One of the requirements for the granting of a patent is that the invention is new. To determine this, a ‘prior art’ search may be conducted, which looks for inventions that are similar to yours, usually in published patents. A prior art search may prevent you from trying to patent an old idea, saving you money.

Patent examiners perform their own prior art searches during examination. They will use the results of their searches against your application. If you search early enough you can prepare your application for prior art objections made by the examiner.

You can conduct the search yourself, pay for a professional search, or request the patent office to request a search. I don’t always recommend a professional patent search before the filing of a provisional patent application. While of high quality, the cost of a professional search can be similar to the cost of filing a provisional patent application. If you have a limited budget for a first filing, it may be more important to spend the money on a high quality patent application that you can rely on. Searching can also be an unwanted delay when the more important task is generally working out how to commercialise the invention.

Patent applicants can do their own preliminary searching at low cost. I recommend this. There are many free online search tools, two of which are GOOGLE PATENTS and PATENTSCOPE. The quality of the search will generally not approach that of a professional using a refined search strategy, but it can provide useful information. Some prior art provides at least some clues on how to draft an application, even if the picture is not complete.

We can request the patent office to conduct a search for you, the search being based on the contents of your provisional patent application. While they are generally not as extensive as a professional search, patent office searches are performed by trained patent examiners and often reveal relevant search results. Generally, we amend a patent specification in light of the search results to give the application the best chance. The amendments may reduce examination costs.

You can’t add new ideas during examination. There may be nothing you can do to overcome an examiner’s prior art objection based on previously unknown prior art. A prior art search before or during the term of a provisional patent application can flag issues before examination, when they can be addressed by amending the specification.

Patent examiners, especially in Europe and the Peoples Republic of China, can be very strict. Because of strict procedures, it may be very difficult to amend a patent claim when a European or Chinese patent examiner cites new prior art. It is better to find the prior art during the term of the provisional patent application, or before. The application can then be drafted before overly strict procedures are in force. Patents are regularly lost to this in China and Europe, but Phoenix Intellectual Property recommends searching to prevent this from happening.

But sometime it is better not to perform a prior art search. Phoenix Intellectual Property considers your situation carefully before recommending to do or not to do a prior art search.

The US, for example, requires that any relevant prior art be submitted to the US patent office for consideration by the US patent examiner. If the results of a prior art search are not disclosed, then the patent may be found invalid by the US courts. This extreme outcome persuades some that prior art searches should not be performed, especially if the US is the major market. However, this risk can be mitigated with proper record keeping, as is our practice of Phoenix Intellectual Property.

Another issue in the US is “treble damages”, where damages are tripled if infringement is found to be wilful. For example, if you had conducted a search and were aware of a patent that you were later found to infringe, your infringement may be found to be wilful and damages awarded against you tripled. In practice, however, this may be more of a concern to applicants that are regularly engaged in litigation. Advice should be sought if this issue is of concern.

In summary, patent applicants should consider having a prior art search conducted in view of the problems with amending a patent specification during examination, particularly in Europe and the Peoples Republic of China. We can help you decide when or if you should conduct a prior art search according to your circumstances.

Justin Blows

Principal, Phoenix Intellectual Property

Feel free to contact me for a free consultation.

(02) 8386 0223

j.blows@phoenixip.com.au