I frequently get questions about patent searches from independent inventors, and one of the most common questions relates to timing. They ask: “When should I do a patent search?” A reasonable question no doubt, but one that does not have a definitively correct answer that applies across the board in all circumstances.
When to get a patent search done is largely a matter of choice, but one that also depends upon the purpose of the search. Most frequently, inventors will seek a patent search once they have an invention that they think is worth patenting, but sometimes inventors won’t yet have an invention that is complete, but would like to get a sense of the patent landscape to determine whether it even makes sense to continue the project and whether there may be some available space that they could target.
These are two different purposes for a patent search, so the first step is to determine why it is that you want a patent search. If you are looking for a patent search that will give you an idea about the patent landscape and whether any available space (frequently called “white space”) exists then you will want to do the patent search early in the process. Of course, you yourself should do a patent search to inform yourself first, although there is real risk associated with only relying on a search performed by those who are not professional searchers. Still, doing your own search is free, except for the investment of time, so it is a logical place to start. We have a patent searching tutorial available to assist inventors in this preliminary first step.
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Typically the search an inventor will inquire about is a patentability search to determine whether the invention they have come up with is one that likely can be patented. I generally suggest inventors start down the patent path by filing a provisional patent application. You can either do a search before the filing of a provisional patent application or after the filing of the provisional patent application but before the filing of the nonprovisional patent application. The cost of a patent search and patentability determination by a patent attorney can range from $1,000 to $3,000, depending upon the technology involved. To prepare and file a provisional patent the charge will typically range from $1,500 to $6,000, again depending upon the technology.
For inventors who find themselves toward the lower end of the provisional patent application range the cost of obtaining a patent search and attorney opinion will be comparable to the cost for preparing and filing the provisional patent application. In that case many will decide to file a provisional patent application to get the ball rolling and obtain “patent pending” status and then on the road to filing a nonprovisional patent a search will be done. For those inventors who will pay toward the higher end of the provisional patent application range, such as for a software related invention, the choice is frequently to do a search prior to filing even a provisional patent application.
The reason not everyone chooses to do a patent search first is because the cost of a search is not insignificant, even if it is less than the cost of preparing and filing a patent application. Additionally, a primary benefit of a provisional patent application is to record your invention and get an early filing date, so some will choose to file a provisional patent application as quickly as possible and not wait for the completion of a patent search. Still further, provisional patent applications are never examined by the Patent Office, so for this reason many will choose to simply skip the search at the provisional stage and then if they decide to move forward with a nonprovisional patent application do a patent search at that point.
So far I’ve described the typical decision by inventors, not the optimal decision. Doing a patent search first before any patent application is filed is always the best course to follow if funds are available. By doing a patent search and obtaining professional guidance from a patent attorney you will be able to determine whether it makes sense to move forward and what, if any, rights could be possibly obtained. In an ideal world everyone would start with a patent search, file a provisional patent application and then within 12 months file a nonprovisional patent application. By doing a patent search first you get to see what else can be located and from the earliest stages begin to explain your invention in a way that accentuates both the positive aspects of the invention and the important differences that exist over the prior art.
There is no doubt that doing a patent search prior to filing any patent application is the best approach. Of course, a lack of funding can necessitate different choices. For those who must cut corners the more you learn about the process and the law the more you will be able to help yourself. With this in mind please take a look at Invention to Patent 101, which is an information resource for inventors.