Three Approaches to Prior Art Search
If you’ve got an invention or an idea that you believe is worth patenting, the first step should be to research if it has already been done.
This type of research is known as a prior art search.
Typically, there are three approaches to undertaking a prior art search:
1) Do it yourself
2) Hire a patent attorney or patent agent
3) Hire a professional searcher
Below is a list of some pros and cons of each of these three approaches in order to assist in your path towards determining if you should (or should not) pursue a patent on an idea you have or invention you have created:
1) Do it yourself
Pros:
Cost - the only cost in researching prior art is the time you invest in doing so
Expertise - you are the expert in your subject are and know exactly what it is that you are looking for
Confidentiality - if you are concerned about the sensitivity of your idea you have no need to share information until you are ready
Cons:
Time - the amount of your personal time you need to dedicate to searching
Search Expertise - professionals have various tools, techniques, and approaches to searching that you may be unfamiliar with
Legal Considerations - as patents are legally binding, there is a risk of overlooking critical prior art that could affect the future validity or enforceability of a patent
2) Hire a legal professional such as a patent attorney or agent
Pros:
Legal Knowledge - patent attorneys and agents understand patent law and are able to analyze prior art in a manner which provides valuable insight into the patentability and legality of your idea or invention
Relationship - as most inventors end up hiring legal representation, you can develop a positive relationship with one at the outset
Time Savings - the burden of searching is off of you, the inventor, to permit dedicating your time in other areas
Cons:
Cost -this is the big one, as hourly rates can be quite considerable
Outsourcing - most if not all patent attorneys and agents outsource their searching to others and only review the results of a search
Subject Matter Expertise - not all patent lawyers may fully understand your area of invention, causing communication challenges or oversight of critical aspects of your invention
3) Hire a professional searcher
Pros:
Cost - they typically cost a fraction of what attorneys cost
Expertise - they know how and where to search to provide relevant results
Objectivity - professional searchers tend to offer a more holistic and unbiased approach to searching of inventions
Cons:
Variable Quality - search professionals offer a wide range of quality of results based on their backgrounds, expertise, and available resources
Legal Knowledge - depending on the searcher’s background they may have limited understanding of the legal aspects around obtaining a patent
Suggestions on moving forward for each option:
1) Do-it-Yourself - take online training on how to conduct a prior art search both using the U.S. Patent and Trademark Office (USPTO) public search and Google Patents search for patent publications, as well as broadening your search for non-patent literature and other prior art. The more you learn and practice, the better the search results you will uncover.
2) Patent Attorneys/Agents - have a conversation with a legal representative to ensure they are an expert in your area of invention and learn how (and with whom) they typically go about conducting a prior art search. Ensure you will be working with someone that you are comfortable with and who has your best interest in mind.
3) Professional Searcher - make sure they understand how Patent Examiners at the USPTO approach searching, and that they fully understand the invention/idea you have. Ask how comprehensive of results you should expect from them — e.g. whether just U.S. Patent literature or a wider array of prior art.
Hopefully this helps a bit when considering how best to undertake a prior art search and whether its best to undertake the process yourself or hire professional to assist you.
