Should you conduct patent search prior to filing and how to do so?
Patent search is basically a research/study of an invention, not limited to Registrar’s database. It is a process identifying prior art and to know what are the odds of approval for your own invention.
To search or not to search
Very often, individuals or inventors who are looking to file a patent for their innovation do not know what they can gain or lose by conducting patent search prior to filing because of the costly professional fees.
Point to consider:
- One of the requirement for an
invention to be patentable is; worldwide
new. Your invention needs to be new in the world and has not been
publicly disclosed in any form (talk, publication, etc) and anywhere in the
world
Pros:
- It would be good to know the
likelihood of approval because the route to application may be costly. (ie.
Patent drafting and patent filing) - Prevent frustration or any
unforeseen circumstances and prepare for the worst; because general timeline to
receive first office action is 3-5 years, subject to Examiner’s workload.
Journey to patent grant could be bumpy or smooth. Bumpy path may take slightly
longer timeline than usual – if you are prep for this. - You get to work around the way
of prior art or improve your invention
Cons:
- Inefficient filing in terms of
time and money - Not patentable due to prior art
- Frustration due to delayed
process and improper planning for business/commercial. - Not 100% accurate. Patent
examination and patentability standards are extremely subjective.
Tips from FOR DUMMIES UK Edition 2008:
It would be good idea to conduct search if your invention meets two or more of the following criterias:
- Relatively simple
- Belongs to high-tech field
- Isn’t fully developed
- Marginally usefully or practical
- Uses very old or a very common device
- Closely resembles something that already exist.
How to conduct Patent Search
There are quite a number of free database or you may even subscribe to some exclusive websites online. You can also be specific and look through registrar’s database, although some database may not be in English Language.
Patent search requires a lot of patience, dedication and reading. You may need to go through quite a number of patent documents in order to identify if prior art is simliar to your invention or not.
Summary of How to:
- You may start by identifying
the key features/keywords of your invention and start searching for those key
features/keywords in your preferred database. - You may want to consider the
classes as well. - Look for cited references if
you think that patent specification does not completely describe the invention.
You may want to check 3-4 of its recent mentioned patent specification - Repeat the last step until you
have at least 10-15 patent specifications. You will need to review each and every
one of the result. - You may want to also simply ‘Google’ those keywords or to see if
there are other similar invention published/disclosed.
It may sound easy with only five steps, but patent specifications are usually thick and very technical. Common feedback of patent specification is repeating and confusing terms, confusing-cross-reference and also confusing technical drawings. Most individual find it very difficult to understand, even inventor themselves, this is normal because patent specification consists of technical and also legal language.
With Lymesol, our patent registration agent got the above covered for you at a very affordable fee! You just need fill in Invention Disclosure Form – don’t worry, it’s just a fancy term of “tell us everything about your invention”. You are advised to produce your own non-disclosure agreement (NDA) for us to sign as well. We promised not to share or reveal your precious information to third party!
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