Why should I conduct a search before filing a patent application?
There are many advantages to conducting a search before filing a patent application, and there are also many different types of searches that can be conducted.
The most common type of pre-filing search is a patentability search. A patentability search aims to determine, at relatively low cost, whether there is a prior disclosure of something that is so similar to your invention that you are unlikely to be able to obtain valid patent protection. A patentability search typically covers prior patents and published previously filed patent applications, and can be extended to consider non-patent references as well. A patentability search does not guarantee that a patent will be obtained, but does provide an assessment of whether there are any prior devices, products or processes that are so similar to yours that filing a patent application would likely not be worthwhile, so that the cost of filing a patent application that is likely to be rejected can be avoided.
Other types of pre-filing searches that can be conducted include state of the art or patent landscape searches. These searches may be conducted for a variety of business reasons as well as IP-related reasons, for example to make a preliminary assessment of whether it is even worthwhile investing in development of new technology and to assess the likelihood that it may be possible to obtain a reasonable scope of patent protection in a particular field, or to determine what competitors are active in a particular space or what technologies competitors are working on developing.
Another type of patent search that is often conducted, although not necessarily before filing a patent application, is a freedom-to-operate search. Freedom-to-operate searches consider whether you are likely to infringe on the claims of patents owned by others in one or more jurisdictions if you bring your invention to market. As damages for patent infringement can be significant, a thorough evaluation of freedom-to-operate is an important consideration in bringing a new product to market.
Any type of search conducted before filing your own patent application will provide valuable information that can help to determine what scope of patent protection is likely available for your invention. For example, pioneering inventions that represent a new development in a completely new field of technology are typically granted a relatively wide scope of patent protection. In contrast, new innovations in crowded fields tend to be incremental in nature, and correspondingly only a narrow scope of valid patent protection is likely to be available.