A patent search should be performed prior to filing a patent application. First, it tells you how likely a patent application will be approved for your invention. You don’t want to spend time and money on a patent application if the chances of approval are low. Second, it gives you an opportunity to work around existing inventions and increase your patentability. By seeing inventions that are similar to yours, you have the opportunity to improve upon those other inventions and increase your invention uniqueness. You are then able to file a patent application for the most unique and improved version of your invention, increasing your chances of patent approval.
Think about it. Would Microsoft or Google file a patent application without doing a patent search? Would they blindly apply for a patent without knowing if similar patents or patent applications already exist? By having a patent search preformed, you get an idea of how patentable your invention is. If the invention has a low chance of patent approval, it’s better to know now before you spend time and money on a patent application or before you pitch it to investors. As a patent application will cost you money to file, it’s better to know what the chances of application approval are through the results of a patent search, prior to spending that money on the patent application. Keep in mind, however, that no search can tell you definitively whether your invention is going to be approved for a patent. This is because patent approval is a subjective determination made by a patent examiner who works at the US Patent Office. To be approved for a patent, you invention must be considered novel, non-obvious, and useful in the mind of the patent office examiner. What is non-obvious to one person may not be non-obvious to another as it is a subjective determination. As such, a patent search will give you an estimate as to how likely a patent examiner will consider your invention patentable. Then, if the chances of patent approval are not as high as you would like, you have an opportunity to increase the uniqueness of your invention before filing the patent application, discussed next.
Just like most people would not go into a business without a business plan, most people would not apply for a patent without doing a patent search. The patent search is the due diligence to see who your competition is. When you apply for a patent application, the patent office examiner will find similar inventions to scrutinize your invention against. An examiner will usually try to make an argument that you are somehow similar to the existing inventions (what we call prior art). Even if you are not identical to prior art, we find that examiners will try to make even weak arguments that you are somehow too similar to prior art they found, simply because it is their job to do so. As such, doesn’t it make sense to get an idea of some possible prior art the patent office may cite, prior to you filing your patent application? A patent search will show you prior art similar to yours so you have an opportunity to work around them. Remember, to be awarded a patent, you need to convince the patent examiner that your invention is non-obviously different from the prior art. Even if nothing out there exists exactly the same as your invention, you could still be rejected if the patent examiner says you are too obviously similar to the prior art. Therefore, the more features and components your invention has over the prior art, the more likely it is to convince the examiner that you are indeed non-obviously different. Study the prior art, improve your invention over the prior art, then file the patent application for maximum differentiation. If you have a patent search completed, make sure to give it to your patent professional. It can help the patent professional draft your patent application to emphasize what differentiates you from the prior art.
One final point. Once you file a patent application, you cannot add to it. So if you’re thinking of filing a patent application first, then doing the search, then amending your patenting application, this is backwards. Searching first to study your opponents, working around them, then filing the patent application is the proper order.
