1 min read
A few hundred dollars of searching can save you a multi-year prosecution fight — or tell you to redesign while it is still cheap to do so.
It is tempting to file first and find out later. A prior-art search feels like a delay when you are keen to get a filing date. But the search is the one step that changes what you file, and it is far cheaper to change course now than after an examination report lands.
What the search tells you
- Whether something close to your invention is already published
- Which features are genuinely new and which are already known
- How to frame the claims so they sit in clear space
- Whether the idea is worth filing on at all
It shapes the draft, not just the go/no-go
A good search does more than return a yes or no. It shows the examiner's likely starting point, so the specification can address the closest known work head-on and the claims can be pitched at the right level of generality from the first draft — instead of being narrowed reactively, one office action at a time.
An application drafted around a proper search usually needs fewer rounds of prosecution. The cost of the search is often recovered in attorney time alone.
The kinds of search
A patentability search looks at whether the invention is new and inventive. A freedom-to-operate search asks a different question — whether making or selling your product would infringe someone else's live rights. They use overlapping databases but answer different questions, and you may need both.
For an early-stage invention, start with patentability. Bring in freedom-to-operate once the product design is close to final.