To Search or Not To Search – That is the Question !
In spite of the advantages of conducting a novelty search, some people opt not to conduct a preliminary (novelty) patent search, or to remain uninformed of relevant publications, before submitting their patent application. This article highlights the varied and sometimes bizarre reasoning behind their choice, as well as the advantages and disadvantages of this approach.
First, we should stress that there is no legal obligation to conduct a novelty search before submitting a patent application, although overall, the chances of receiving a patent increase when a novelty search is conducted in a comprehensive and thorough manner.
Let us assume that the owner of the invention has for the moment a very small budget but expects to be in a better financial situation in a year. In such a case, he/she might not have sufficient funds to afford the costs of both the search and the patent application, and it is therefore in his/her interest at this time to apply for a patent rather than paying for a novelty search. It is nonetheless possible to conduct the novelty search first and to submit the application when there are sufficient funds, but there is always the possibility of someone else publishing the invention or applying for a patent for himself or herself, and therefore ruining the chances of a successful patent.
The process of searching for prior art lasts from one to two weeks, while the owner of the invention must submit an application immediately. In one instance the owner of an invention came to us for the first time a week before she planned to present the invention at an important international trade show, and asked us to prepare an immediate patent application and to submit it within 3 days. On another occasion, an inventor came to us shortly after telling a colleague about the invention, having immediately become concerned that his colleague would apply for a patent himself and thus rob him of the fruits of his invention.
3. Multiple inventions
In some cases, inventors come to us and after hearing about their invention, we decided that it should be presented as multiple inventions, each requiring a separate search. In that case, doing all of the searches could take considerable time and money. It is also possible that after the patent is examined, the examining body (usually the authority to which the application was submitted) will decide not to consider all of the inventions than were submitted, especially if the inventions have a strong common theme. Furthermore, the more inventions are submitted, the greater the chance to succeed in obtaining a patent (for at least one of the inventions). In such cases it may be advisable to begin the first search only after submitting the application.
4. Experts in their Field
We are approached sometimes by professional people who are authorities in their field, for example, professors with many years of experience who are at the cutting edge of technological advancements. They are often convinced that there is no relevant prior art, since if there were they would have known of it, and therefore they assume that it is pointless to conduct a novelty search. In spite of their knowledge, our experience has shown in more than a few cases the fallacy of this assumption.
In other cases, inventors turn out an invention that is developed from one their previous inventions for which a search has already been made. In such cases the inventor is more or less familiar with the publication related to the current invention, without having to conduct a new search. One should keep in mind that if some time has elapsed since the previous search was completed, there may be new publications relevant to the current invention.
5. Concealing Prior Art
In some cases, inventors or owners of an invention know of prior art relating to their invention, but hope that the publication or information will not be discovered during the patent examination, or by their competitors. A similar situation might arise when an inventor or owner of an invention has himself published the invention prior to submitting his application, perhaps in a local trade show, or on a poster in a professional conference, etc. In principle, searches made by the examining patent office focus on patents and patent requests, and therefore if the invention or something that resembles it were published in another format, there may in fact be a reasonably good chance that the troublesome publication would not be discovered.
The concealing of prior art by the owner of an invention or by his/her patent agent is a criminal offense in many countries. The applicant for a patent must disclose all relevant publications that exist to his or her knowledge, up to receiving a patent. The penalty for failure to disclose may amount to rejection of the patent.
6. Due Diligence Search
An owner of an invention might intend to sell his or her patent application or to find investors a short time after its submission. Sometimes the prospective buyers or investors will prefer to oversee their own novelty search, rather than to rely on the results of a previous search that was not done under their control.
Ostensibly, one search before the patent application is submitted (made by the invention’s owner) and one shortly afterwards (in a due diligence process) may be considered wasteful. One should keep in mind however that for the due diligence process to be as favorable for investment as it should, the wording of the patent application should be such as to diminish as much as possible the importance of any existing knowledge (prior art) by presenting it as irrelevant, and this is only possible if a search is made prior to submitting an application.
7. Unfinished Inventions
It is not necessary to finish developing an invention before submitting its description for a patent. It is possible that as a result of development of an invention after its submission for a patent the invention will change to an extent making the previous novelty search obsolete, and the application might have to be abandoned or cancelled, and a new search made before submitting the updated invention.
8. First Year Search
Recently there has been a great and helpful development in the patent application process. There are a number of patent authorities that offer to do a novelty search within a year of the patent being submitted to them. Patent offices in Italy, England and Israel offer this option for an added fee at the time the application is submitted to them.
This search has the advantage of being conducted by the same authority that has to approve the patent, and will treat the result with its full weight, while ignoring searches made by an outside party before submission. In case the results of the search are adverse, the application may be cancelled and a new application written to distinguish the invention from prior art. Other applications may be submitted to other authorities within the year. If the first results are favorable, there is time to decide whether to submit additional applications or to continue the process in the country where the original application was submitted.
We recommend this search option when the inventor is very knowledgeable in the field of his invention, so that he or she might take the small risk of not conducting a preliminary search, and also may be able to assist in writing the application and thereby lower that cost. In such cases it may be possible to use some of these savings to pay the patent authority to expedite the search.
It should be noted that this option has only been available in Israel from the end of 2010, and therefore there is not enough experience to vouch for its quality.
9. The Patent or Patent Application are Strategic Holdings
Patents, and even patent applications, are not only offensive weapons, to deter imitation by competitors, but also marketing tools. For example, the product may be labeled as “patent pending” (that is, the product is described in a patent application that is pending approval) to impress the buying public into perceiving the product as unique and innovative, and therefore increase the product’s prestige.
In some cases the product is marketed in an area where patent infringements rarely occur. In these instances the marketing value may be much more significant than the deterrent value, so that the actual approval is not as important as keeping the application alive for as long as possible.
A patent application also has deterrent value against competitors. Even though competitors may be able to inspect the application themselves and determine its chances of becoming a patent, many of them are reluctant to introduce a competing product into the market until the examining body accepts or rejects the patent. Even if they enter the market after the patent is rejected, the patent applicant is already at a significant advantage from being the first in the market.
10. Uses of a Patent Application as a Preventative Publication
Sometimes preventing a competitor from patenting an invention, not the patent itself, is the real reason behind a patent application. While it is theoretically enough to prevent a competitor’s bid for a patent by publishing the invention through traditional marketing methods, such as brochures or in a trade convention, the reality is that the examiners who work for the patent authority usually rely on comparison with existing patents and patent requests. It is therefore easier to prevent competitors from getting a patent by submitting a patent application than through other media.
11. Finally, some inventors are mainly interested in inflating their egos, collect patents as a hobby, or wish to enhance their resumes by applying for patents, and are not particularly concerned with the value of the patent or in some cases if the application is even approved or not.
As a general rule we advise such inventors that there are far less expensive hobbies to choose from.
Howard Zvi Teff, Ph.D. , Patent Attorney at Gold Patents & Financial Services Ltd., Howard specializes in Computational Chemistry, Electrochemistry, Analytical Chemistry, Biophysical Chemistry and Biotechnology.
Patent it Yourself, David Pressman, Nolo, 950 Parker Street, Berkeley, CA, USA.