WHAT IS A PATENT SEARCH AND DO I HAVE TO CONDUCT A PATENT SEARCH BEFORE FILING AN APPLICATION?

A search of the U.S. Patent Office records and, optionally, of foreign patent office records, can be conducted in order to determine the chances of successfully obtaining a patent that adequately covers the features of interest in a company’s invention. Conducting a patentability search is optional before filing a patent application, but is useful to determine whether the expense of a full patent application is warranted. A patentability search also helps to focus the preparation of a patent application on those features or aspects of an invention that are new rather than dwelling on unpatentable features. If a search is conducted, any patents that are found which are material to the invention will be provided along with the application to the Patent Examiner. Inventors and their attorneys have a legal obligation to inform the Patent Examiner of all material prior art of which they are aware, including prior technology of their own company as well as competitors. Ultimately, the disclosure of all known material prior art produces a stronger patent, since this reduces the effect of an infringer later arguing that the Examiner was mistaken in granting the patent due to the best prior art being kept from the Examiner. Regardless of the information submitted, the Patent Examiner will conduct a search for prior art and combine his or her results with any information the applicant submits.

Other types of patent searches can be conducted that have a different focus. Examples are searches for patents owned by a particular company, referred to as an "assignee" search. Such searches are useful in determining if a competitor has protected a product or when deciding what value to place on a company under consideration for purchase. An infringement or clearance search can be conducted if there is some level of concern that your company’s new product may face an infringement risk. A "validity" search can be undertaken if your company is threatened with or otherwise concerned as to risk of infringement in order to determine whether there is a chance of establishing that the patent is invalid or to establish that the scope of that patent is restricted in a manner that avoids infringement.