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Best Practices

The Importance of Patent Searching Prior to Filing

By August 10, 2017January 5th, 2021No Comments

There are many steps between a eureka moment and a patented invention. First come documentation, review, and approval. In most cases, the next step is performing a search of relevant patents and other prior art prior to filing. 

The importance of a prior art search depends on your organization’s goals. If your business will not be impacted by whether or not your invention is patented, conducting a prior art search is less important. Urban innovation hub MaRS recommends the “amount of effort spent in performing a prior art search should be proportional to the value of the invention and subsequent patent.”

However, many companies do rely heavily on the protection patents provide. In situations where patent strength is imperative and broad claims are desirable, a thorough search of a comprehensive prior art database is essential. 

Why Is It Important to Do a Prior Art Search?

Prior art includes both patent and non-patent literature. The most commonly cited sources of non-patent literature during patent prosecution are IEEE articles, which are included in InnovationQ® Plus. Defensive publications are also invaluable sources of prior art. You can access the world’s largest collection with IP.com’s Prior Art Database. There are many reasons for conducting a prior art search by carefully reviewing these sources, including cost, patentability, and validity. 

1. Cost

The high costs of pursuing and defending a patent highlight the importance of a prior art search. Familiarizing yourself with relevant prior art before drafting and submitting your application ensures your intellectual property is both novel and nonobvious. Confidence in the novelty and nonobviousness of your invention helps organizations see a patent on the technology as a worthwhile investment. This knowledge also increases your chances of developing an issuable patent and prevents costly requests for continued examination (RCEs) or appeals. 

2. Patentability

Perhaps the most important reason for conducting a prior art search is determining whether or not the invention can be patented at all. Knowing the prior art helps you file a set of claims calling out the patentably distinct differences that make your invention both novel and nonobvious. Even “if the prior art is close to the invention, areas that are patentable in spite of that prior art can be emphasized in the patent application.” 

A prior art search can also identify any technologies outside of your patent you’ll need to license to distribute your invention.

3. Validity

Knowing the state of the art prevents you from obtaining a patent that will not hold up during litigation. Identifying the most relevant prior art in your application ensures your examiner considers it and makes it part of the record. In fact, inventors, attorneys, and any other person “involved in the preparation or prosecution of the application” are obligated to disclose relevant information, including prior art. The more relevant prior art disclosed in the patent application, the stronger the final patent is.