Things every client should know about patents

Is performing a patent search necessary?

It’s not legally required to perform any kind of patent search prior to filing a patent application, but some clients prefer commissioning one.

This is another example of an excellent topic to discuss with a registered patent attorney at the outset of the engagement. The reason? There are actually numerous advantages and disadvantages to the performance of a patent search, and different clients weigh these benefits and costs in different ways.

Examples of the advantages of performing a search potentially include: (a) a greater understanding of the patentability of the invention based upon the prior art (i.e., the previously issued patents and journal articles relating to the subject matter of the invention) which has been located during the search; and (b) a greater understanding of ways in which the invention might be distinguished from other similar inventions in the field.

Examples of the disadvantages of performing a search potentially include: (a) the cost associated with the commissioning of a professional patent searcher; (b) the time spent analyzing the prior art uncovered (which delays somewhat the filing date of the application); (c) the potential for locating prior art patents which might make it harder to obtain a patent for your invention (note: as stated above, there is no duty to perform a search, but, if you do perform one, you must disclose to the U.S. Patent and Trademark Office any and all patents of which you are aware that are material to the patentability of your invention); and (d) the potential for uncovering third-party patents which, while not relevant to patentability, may nonetheless create a potential exposure for an alleged knowing, intentional, and / or willful infringement of those patents.

Bottom line: it is important to confer with a registered patent attorney before conducting even casual patent searching (to say nothing of engaging a professional patent searcher), so that the decision to conduct a search is a fully informed one.