What Is a Patent Search and Why You Should Do One Before Filing

Preparing to File: A Pre-Filing Checklist

Considering a patent application?

If you're contemplating seeking patent protection, you likely have questions about the necessary pre-filing steps. I've created a comprehensive guide, split into two key parts: what to do and what to avoid during this crucial phase.

This document covers the first part.

Eleven Actions to Take Before Submitting Your Application:

1. Safeguard Your Invention's Secrecy Until Filing

Should you intend to file a patent application, absolute secrecy of your idea before the filing date is paramount. Accidental or deliberate pre-filing publication of your invention is detrimental. Patentability hinges on novelty; thus, prior public disclosure renders your invention ineligible for patent protection. Prevent inadvertent disclosure by utilizing Non-Disclosure Agreements (NDAs), as discussed next.

2. Employ NDAs Before Discussing Your Invention

Before any discussions about your invention, secure a signed NDA.

Here's a downloadable template (provided by WIPO): [Link to WIPO NDA Template]

Even with an NDA in place, exercise discretion regarding the information you reveal. Particularly, limit disclosures to experts in your invention's field. Consult with a patent attorney and await filing before substantive discussions whenever possible.

Patent attorneys are already bound to confidentiality, so no need to make them sign one – see the next point.

3. Consult with a Patent Attorney

Your initial action should be to consult with a patent attorney. This consultation is vital to strategize your intellectual property (IP) approach. Sharing details of your invention with individuals bound by professional confidentiality is permissible. This group includes patent attorneys, other legal professionals, and staff at the EPO and national IP offices. Always secure an NDA before discussing your invention with anyone else, especially companies.

4. Familiarize Yourself with the Patent Application Process

Patent application is a strictly regulated process. Rigid timelines and generally non-extendable deadlines are characteristic of it. Avoid haste; thoroughly examine the process and gather answers to all your questions from a patent attorney before filing. Obtain information from reliable sources, such as a patent attorney or the EPO (www.epo.org).

5. Study Competitor Products and Patents

Identify your principal competitors and take time to analyze their offerings, as well as searching for their existing patents. Evaluate what your competitor excels in and consider how your product could improve it. Understand distinctions between the offerings, consider methods of product advancement or incorporating new characteristics. Knowledge of prior art and market solutions may aid during examination by proving your invention's novelty and inventive step.

6. Understand the Costs Involved

Initial consultations with an attorney will generate estimates that will cover fees for the writing, submission, and official fees for search and submission. Further fees accumulate later, at each phase: examination, designation fee after publication, and annuity fees from the third year. Responding to official actions, grant fees, and validation fees also add to the costs. Each stage (filing, prosecution, grant, and validation) can cost thousands, including costs for enforcing patent rights. Translations are also a significant part of the costs.

Avoid filing if you cannot afford professional counsel or maintaining the patent via maintenance fees.

You can find up to date fees of the European Patent Office here: [Link to EPO Fees]

Find an article on patenting costs here: ["Costs of Patenting"]

7. Assess Whether a Patent Is Truly Necessary

Evaluate the best strategy: is a patent really the best route, or would a trademark and aggressive marketing be more beneficial? Is your invention's life cycle brief? Could you more easily keep the innovation a secret? Can you establish a successful business based on your invention? Thoroughly analyze your situation to prevent unnecessary time and financial investment in something you may not need.

More insightful questions are in this article: ["Do You Really Need a Patent?"]

8. Define Your Objectives for Patent Protection

Clarifying your reasons for seeking a patent makes it easier to formulate your IP strategy and to refine it during the patenting procedure. For example, if you are after merely pending status of the patent, you might want to delay the process to spread the fees.

Common patent misconceptions that may lead to unmet expectations are compiled in this article: ["Common Misconceptions About Patents"]

9. Commission a Professional Prior Art Search

A thorough prior art search assists you in understanding the state-of-the-art in your invention's technical area and in evaluating the patentability of your innovation, especially regarding novelty and inventive step. Access patent documents easily through online databases, like Espacenet – a quality, free database maintained by the EPO. (Espacenet hosts over 140 million patent documents globally.)

During the search, keywords related to your invention will be utilized. The results will lead to a list of similar inventions and help you study them further. Thus you'll receive a patentability opinion and keep up-to-date with innovations in the pertinent technical area. Also, this search lets you find out competitor's patents in order to monitor their activities and to steer clear of infringing their rights.

If you understand patent language and have the time, you can perform the search yourself using the EPO's Espacenet database.

TIP: If the search turns up an invention identical to yours and calls into question the novelty of your creation, investigate the matter in greater detail. Closely study the patent documentation and find out ways your product may improve. This gives you both a better product and potentially patentable result.

10. Prepare a Comprehensive Invention Disclosure Report

It is forbidden to add new information to your patent application after its filing date.

Hence, preparing a complete description before filing, including all potential embodiments, is crucial. New characteristics and examples can not be added later. While describing your invention, try to think about how your invention can be bypassed and bring up all available alternatives within the application.

For help with creating your invention disclosure report: ["What is an information disclosure document?"]

11. Develop Your Overall Intellectual Property (IP) Strategy

A one-size-fits-all IP strategy does not exist. It must be created to meet your objectives. It should align with your company's overall strategy. If planned thoroughly, the entire patenting procedure may start already prepared. Your attorney should be included in the discussions, and you need to take into account trademarks and designs, as they are all part of the whole package. Your strategy will depend greatly on objectives, budget, the size of your firm, business plans, etc. A well thought out strategy ensures a well-made application, cost saving, planning on submission timing and business negotiations. It lets you choose the countries where you need protection.