Why High Quality Patent Search Makes a Difference

In today’s patent prosecution world, cost reduction is king. Every application that is submitted to a patent office ultimately represents an investment of thousands of dollars  in drafting the invention disclosure and the application, paying various patent office fees, and managing the back and forth with the patent office during prosecution.

Some practitioners try to save money during this process by forgoing the expense of a patentability search, but this is a false economy.

For filers who are looking to expedite their processes, focus and streamline their investment, and mitigate competitive threats, it is in their best interests to manage this process so that:

  • Ideas that are likely to be deemed not patentable by the patent office never enter the beginning of the funnel
  • Applications that do move forward are extremely well-crafted, resulting in fewer office actions and speedier grants
  • Granted patents provide the protection that you expect

An effective patent and technical literature searching program is critical to supporting the above objectives and can both promote a stronger innovation pipeline and result in significant returns on investment. 

Identifying Issues Early

Filing a patent application when readily available prior art would indicate your idea is not novel is a waste of time and money. A focused patentability search performed early in the process, once the key inventive concept has been defined – commonly known as a knockout, screening, or pre-filing search – can identify prior art that should be considered in your decision-making around your innovations. This search might focus only on English language patent and technical literature electronic resources.

Based on these searches performed early in your process, you’ll likely decide to abandon some share of your ideas, so you reap the savings associated with their never entering the application drafting and prosecution processes. For others, you’ll use the results found during the search as input to the development of invention disclosures and patent applications that are written specifically to avoid the existing prior art.

Conducting In-Depth Assessments

Prior to filing your application, a full patentability search provides another layer of protection and support for the upcoming prosecution. Ideally, this search should be conducted in multiple languages and involve targeted electronic and manual resources to ensure an even more robust view of the prior art to guide possible additional revisions prior to filing the application.

For innovations that continue through to the filing stage, you can expect improved allowance rates and savings in prosecution costs. You’ve already weeded out the weaker ideas, and you’ve developed compact, well-crafted applications for those innovations that move forward, based on what you’ve learned about the prior art during the search process.

Keeping Searches Current

Once the prosecution process has begun you may also find value in updating the original patentability search based on the comments provided in an office action received from the patent office. These updated search results can help in revising the claims to address any issues raised.

An Investment That Pays Off

Patentability searching throughout the application and prosecution processes can add significant value, whether you employ this approach on a one-off basis for a single innovation or whether you rely on a structured, repeatable search process that you use for every innovation. Every invention that is abandoned early in the process and every invention that is revised based on search results is money in the bank. And your investment in searching provides you with confidence in your innovation process and in the quality of your granted patents.

However, that doesn’t mean that you shouldn’t be cognizant of the associated search costs. In order to support your return on investment, your search provider must truly be a partner.

Your search provider must work with you to fully understand your objectives. They must employ refined, highly-structured search methodologies. They must be intimately familiar with all relevant patent and technical literature resources, with the ability to search in multiple languages, online and on the ground.

A search provider possessing all these capabilities – and most do not – can ensure that every minute counts. They will minimize the time spent on collection and maximize the time spent on review and analysis, thus providing you with the best value and great results, regardless of your budget. CPA Global is that partner.

Did you know CPA Global has been trusted by the USPTO to conduct search and preliminary examination of PCT applications since 2005? Get all the details on our Patent Search here.