When a client approaches our firm with a new invention, the top question is usually the same: is my invention patentable? This question has no clear definitive answer. Indeed, the issue of patentability can be so complex that parties often spend millions on patent litigation to obtain an answer. Instead, the more appropriate and informative question should be “is my invention not patentable?” A thorough prior art search can help with the answer.
Filing and prosecuting a patent application is an important investment. And, as any prudent investor will attest, avoiding bad investments requires due diligence. Although no one can guarantee that your invention is patentable, an experienced patent attorney can tell you when it isn’t. To formulate a well-reasoned opinion, a patent attorney must execute a prior art search.
What is a prior art search?
In patent law, a prior art search involves your patent attorney researching various databases for information relative to your invention. Specifically, the goal of this research is to determine the current state of the art in the relevant field. Contrary to popular belief, commercially available products do not define the state of the art. From a legal perspective, this issue is much broader. The state of the art is any obvious combination of publicly available information.
Why is establishing the current state of the art is so important? Because this is the benchmark against which a patent examiner will judge your invention. State-of-the-art technology is not patentable. Instead, to obtain a patent, you must prove that your invention is so innovative that is both novel and nonobvious over the current state of the art. This is a difficult task. Therefore, although a prior art search may not answer whether your invention is patentable, it will tell you whether it is not patentable.
The goal of a good prior search is to “kill” your patent prospects. After all, when you file your patent application, this is exactly what the patent examiner will try to do. Thus, if your patent attorney can preemptively find “fatal” combination of prior art before you spend time and money on a patent application, you will avoid a bad investment.
Practical Strategy
How much should you spend on a prior art search? It depends. Not all prior art searches are equal. For example, a quick Google query will reveal many companies “specializing” in prior art searches. Don’t fall in their trap. Most of these searches are conducted by foreign-based individuals with no familiarity with U.S. patent law.
Unless a licensed U.S. patent attorney performs the patent search, it will be a fruitless endeavor. Better yet, find a patent attorney whom you intend to hire to prepare and prosecute your patent application and, then, invest into that patent attorney to do the prior art search. This strategy maximizes the return on your investment in two ways. First, the patent attorney will tell you whether perusing a patent for your invention is a worthy endeavor. Second, the knowledge your patent attorney will gain by researching the state-of-the-art technology will result in a much stronger patent application with surgically precise patent claims. This precision will likely result in a smooth prosecution, paying you dividends in terms of quicker allowance, longer patent term, and lower prosecution cost.
