About Jonathan Foster: I’m Jonathan, a trainee patent attorney in our Leeds office. I have a background in Physics, Nanotechnology & Biophysics, and am particularly interested in the use of physics in the medical field. Alongside my training, I am also the Welfare Officer to the CIPA Informals, a committee member of the Institute of Physics Early Career Members’ Group, and an advisory board member for the charity Jonathan’s Voice.’
Firstly, there is no getting around the fact that drafting, filing and prosecuting a patent application can be expensive. The cost can be even more significant for individual applicants, start-ups and SMEs. This is compounded when you consider the possibility that your patent application might not be granted.
So how do you mitigate the risk of filing a patent application that may eventually be refused?
This is where a pre-filing search comes in.
A pre-filing search will take the general concept of your invention (of course, under strictly confidential conditions), and search various patent databases and non-patent literature, such as academic papers and websites, to uncover any documents that may be relevant to your invention. You will normally be able to specify the depth and breadth of the prefiling search, to cater to your invention and how much money you wish to spend.
Of course, no search is exhaustive, and it might be that a patent office uncovers different prior art, or interprets documents in a different way; but the pre-filing search will certainly give you a good indication as to what documents are out there.
The pre-filing search may provide a number of different results:
- There are no relevant documents raised in the prior art search.
- Hurray! Your invention appears patentable.
- In reality, this result is rare, purely because of the vast number of ‘stuff’ there is out there.
- There are some relevant documents raised in the prior art search, but they differ slightly to your proposed invention.
- Excellent, your invention not only appears patentable, but you have some prior art documents that will help guide the drafting process.
- This will likely save you money during prosecution of your application, and help you more quickly obtain a granted patent.
- There are some very relevant documents to your invention.
- Okay, so this might not be the best result, but it will help you decide whether to proceed with your patent application, or to go away and work to amend your invention, or to go down a completely different path all together.
- In this scenario, you will have saved yourself the cost of drafting, filing and prosecuting a patent application that may likely have never been granted.
- There is a granted patent that already covers the scope of your invention.
- While this is bad news for your chances of getting a granted patent application, this is helpful in various other ways.
- For example, if you were planning on selling your invention in the form of a new product, you will now be aware of the risk that the patent owners may attempt to enforce their patent against you, including seeking damages.
- It could also help inform your future strategy; if you know there is a granted patent out there, you can amend your invention/product to work around these, and avoid any future infringement proceedings.
- For more complete analysis on your likelihood of infringement, a ‘freedom to operate’ search would likely be needed – more details to come on this in a future blog post.
As you can see, a pre-filing search will generally produce some very pertinent information to your invention – be that a guide for drafting an application, or to help you when commercialising your product.
To further save costs, you may choose to carry out a pre-filing search yourself. There are plenty of resources out there, such as google searching and the use of Espacenet. A Google search will often lead you to prior art such as websites, academic publications and user manuals which may be relatively easy to find and interpret. You may also be an expert in your field, and have clear oversight as to what technology is already out there. However, clients are often surprised by some of the more obscure prior art that is uncovered during searching!
Espacenet is a free online service for searching patents and patent applications, developed by the European Patent Office (EPO) together with member states of the EPO. While searching and finding patents and patent applications using Espacenet may be relatively easy, filtering and interpreting these documents could prove a much more difficult task. This is where the benefits of using a patent attorney will come in. Patent attorneys will usually provide some evaluation of the uncovered documents, helping you to efficiently interpret the (often confusing) patent language.
Ultimately, the decision lies with the applicant as to whether they are happy with their own searching, they wish to instruct a patent attorney to perform a pre-filing search, or to go straight ahead with filing a patent application. Obviously, in some cases, such as trying to bring a product quickly to market, it simply may not be suitable to delay the filing of a patent application.
However, a pre-filing search will more often than not provide very relevant information regarding an invention, and will usually save the applicant money, in the long run.
