When should you do a Patent Search?

By Gene Quinn on August 1, 2015

search-magnifying-glass335I frequently get questions about patent searches from independent inventors, and one of the most common questions relates to timing. They ask: “When should I do a patent search?” A reasonable question no doubt, but one that does not have a definitively correct answer that applies across the board in all circumstances.

When to get a patent search done is largely a matter of choice, but one that also depends upon the purpose of the search. Most frequently, inventors will seek a patent search once they have an invention that they think is worth patenting, but sometimes inventors won’t yet have an invention that is complete, but would like to get a sense of the patent landscape to determine whether it even makes sense to continue the project and whether there may be some available space that they could target.

These are two different purposes for a patent search, so the first step is to determine why it is that you want a patent search. If you are looking for a patent search that will give you an idea about the patent landscape and whether any available space (frequently called “white space”) exists then you will want to do the patent search early in the process. Of course, you yourself should do a patent search to inform yourself first, although there is real risk associated with only relying on a search performed by those who are not professional searchers. Still, doing your own search is free, except for the investment of time, so it is a logical place to start. We have a patent searching tutorial available to assist inventors in this preliminary first step.

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Typically the search an inventor will inquire about is a patentability search to determine whether the invention they have come up with is one that likely can be patented. I generally suggest inventors start down the patent path by filing a provisional patent application. You can either do a search before the filing of a provisional patent application or after the filing of the provisional patent application but before the filing of the nonprovisional patent application.  The cost of a patent search and patentability determination by a patent attorney can range from $1,000 to $3,000, depending upon the technology involved. To prepare and file a provisional patent the charge will typically range from $1,500 to $6,000, again depending upon the technology.

For inventors who find themselves toward the lower end of the provisional patent application range the cost of obtaining a patent search and attorney opinion will be comparable to the cost for preparing and filing the provisional patent application. In that case many will decide to file a provisional patent application to get the ball rolling and obtain “patent pending” status and then on the road to filing a nonprovisional patent a search will be done. For those inventors who will pay toward the higher end of the provisional patent application range, such as for a software related invention, the choice is frequently to do a search prior to filing even a provisional patent application.

The reason not everyone chooses to do a patent search first is because the cost of a search is not insignificant, even if it is less than the cost of preparing and filing a patent application.  Additionally, a primary benefit of a provisional patent application is to record your invention and get an early filing date, so some will choose to file a provisional patent application as quickly as possible and not wait for the completion of a patent search. Still further, provisional patent applications are never examined by the Patent Office, so for this reason many will choose to simply skip the search at the provisional stage and then if they decide to move forward with a nonprovisional patent application do a patent search at that point.

So far I’ve described the typical decision by inventors, not the optimal decision. Doing a patent search first before any patent application is filed is always the best course to follow if funds are available.  By doing a patent search and obtaining professional guidance from a patent attorney you will be able to determine whether it makes sense to move forward and what, if any, rights could be possibly obtained.  In an ideal world everyone would start with a patent search, file a provisional patent application and then within 12 months file a nonprovisional patent application. By doing a patent search first you get to see what else can be located and from the earliest stages begin to explain your invention in a way that accentuates both the positive aspects of the invention and the important differences that exist over the prior art.

There is no doubt that doing a patent search prior to filing any patent application is the best approach. Of course, a lack of funding can necessitate different choices. For those who must cut corners the more you learn about the process and the law the more you will be able to help yourself. With this in mind please take a look at Invention to Patent 101, which is an information resource for inventors.

Happy inventing!

The Author

Gene Quinn

Gene Quinn is a patent attorney and the founder of IPWatchdog.com. He is also a principal lecturer in the PLI Patent Bar Review Course and an attorney with Widerman & Malek.

Gene’s particular specialty as a patent attorney is in the area of strategic patent consulting, patent application drafting and patent prosecution. He has worked with independent inventors and start-up businesses in a variety of different technology fields, but specializes in software, systems and electronics.

is admitted to practice law in New Hampshire, is a Registered Patent Attorney licensed to practice before the United States Patent Office and is also admitted to practice before the United States Court of Appeals for the Federal Circuit.

Gene is a graduate of Franklin Pierce Law Center and holds both a J.D. and an LL.M. Prior to law school he graduated from Rutgers University with a B.S. in Electrical Engineering.

You can contact Gene via e-mail.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

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There are currently 2 Comments comments. Join the discussion.

  1. Benny August 2, 2015 5:26 am

    I would go further and suggest that patent searching is an ongoing and continuous part of R&D. By keeping an eye constantly open on the patent landscape, you will know when you are running towards a patent roadblock.

  2. Anon August 2, 2015 9:17 am


    I just wanted to let you know that I agree completely with your post here.

    All too sadly though, I have had clients that have as their official policy the exact opposite direction. For fear of treble damages, clients have instituted policies that direct their employees to NOT review published patents at all.

    I have had discussions with my congressional representatives about this effect, hoping to push a view that publication should be made to entail a de facto presumption of knowledge, but I am a realist and know that my view and my voice will not turn the tide on this issue. Never the less, I will continue to use my voice so that perhaps other voices will join mine, and one day our representatives will notice that corporate policies that are created that directly go against the mission of the Patent Office need to be recognized and actively legislated in a manner that the Office’s mission can overcome what amounts to purposeful ignorance.

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