Today I’m going to answer the question – When should a prior art search be conducted?
Patent Attorney Video Series – Question 9
Read the transcript.
When should an Inventor do a prior art search?
A prior art search is not required. That is, even if you do a prior art search, and you cite any references you find to the Patent Office for the Examiner to consider (this is required by law!), the Examiner will still do their own search for your invention.
So a prior art search is not required. Is it recommended? Yes – I usually recommend a prior art search. But there are times I don’t recommend a prior art search (or at least I recommend that my client file a patent application before doing a prior art search). For example, if there is a pending bar date.
I talked about bar dates in another one of my other videos, so I won’t waste time talking about that again here. But if you’re up against a bar date, you’ll need to contact a patent attorney immediately and get your patent application filed as soon as possible before it’s too late! Get in to see a patent attorney right away. When you call them to make an appointment, tell them that you’re up against a bar date, and ask for them to get you in as soon as possible – before it’s too late! (I can’t emphasize this enough).
If you’re up against a bar date, for example, if the bar date is in 2 weeks, you don’t want to waste your time doing a patent search. Chances are, getting the results back is just going to eat up that time, and then it’s going to be too late. Then it won’t matter what the results of the patent search are, because if you’re up against the bar date, you’ll be out of luck if you go past that.
In those situations, I’ll often say not to bother with the patent search (at least not right away). Instead, get that patent application (at least a provisional patent application) filed to lock down that filing date.
So when should an inventor do a prior art search? Just about any time before making an investment in the patent process. The patent process is expensive. You don’t want to waste money filing patent applications on things that are already out there.
I usually recommend my clients do a patent search, get the results, and then make a better decision. It may also help your patent attorney write a better and stronger patent application.
You may want to file at least a provisional patent application first.
It’s not only bar dates you need to be concerned with. Remember the new patent law is a “First-To-File” system – see my video on the new patent law and how it affects inventor rights. Or read this article.
If you file a provisional patent application, then you can do a prior art search. You have 12 months after filing the provisional patent application to file a full utility patent application. So maybe 6 or 8 months after filing the provisional patent application is a good time to do a prior art search. That helps you decide whether to move forward with the full utility patent application.
In summary, a prior art search is not required. It is generally a good idea to do a prior art search. But the timing of the prior art search is what’s important. There may be times when it’s just not feasible to do a prior art search before filing a patent application. Be sure to discuss your matter with a registered patent attorney to help you determine when it is best to do a prior art search.
I hope this answers your question. Remember, it is important to work with an attorney to file a patent application with the US PTO within the time limits set by the Patent law, or you may lose the right to patent your invention.