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Why Investing in a Professional Pre-Filing Patent Search Before You File a Patent Application is Usually a Good Idea

Written by: Lawrence A. Maxham 

Patents can be a vital asset to your business. They generally take quite a bit of time and resources from filing to issuance. A professional patent search can help you determine your invention’s path to success and the value of investing further. A professional patent search entails an in-depth review of databases using classification systems and keyword searches to determine if there is relevant prior art. Prior art is used to ascertain the novelty of an invention and it can be anything that has been previously and publicly disclosed including, but not limited to, issued patents, published patent applications, and non-patent literature (NPL). 

Please note that a pre-filing search is not a legal requirement. However, it is highly recommended. There are several benefits of a professional search, as laid out below.

A professional pre-filing search can cost $1,500-3,000, which includes the in-depth research done by a professional search agency and our knowledgeable analysis and opinion, with respect to your invention, of the prior art provided by the agency. Depending on the strength or relevance of the prior art, you might not be encouraged to invest $7,000-15,000 for having a patent application prepared and filed; thus, potentially saving you and your company considerable time, effort, and investment. It might also have the added benefit of providing you with awareness of prior art so that you might have more information to improve upon for your next invention. 

On the other hand, if the search results are positive, you can feel comfortable having a qualified patent attorney prepare and file your patent application, knowing there is a reasonable chance of patent success. Now that you have had the pre-filing search done, accompanied by an attorney’s analysis and opinion, your chances of successfully obtaining a patent are improved and you may then decide to move forward with filing your patent application. The pre-filing search proves to still be useful because it gives your attorney a great advantage that they may not have had otherwise. The pre-filing search results will give your patent attorney very useful information and broader familiarity with the relevant prior art when the patent application is being drafted. 

Furthermore, without a pre-filing search your attorney likely would not know the true scope of the prior art and, therefore, the patent application may not be as focused on what is most important in defining the invention to be clear of the relevant prior art. Essentially, by knowing the scope of the prior art your attorney can make a stronger description to define novelty by avoiding the pitfalls of otherwise unknown prior art. A focused patent application will help the examiner at the United States Patent and Trademark Office (USPTO) to not waste time on looking for the prior art you have already found and disclosed to the USPTO.

With our many decades of experience The Maxham Firm can efficiently examine the relevant prior art found by our professional searcher and inform you as to where your invention stands in its viability for success. 

If you have questions about moving forward with your invention or about a professional patent search call us at 760-975-3843 or e-mail us today and we’ll be happy to set up a consultation with you to discuss your next steps. You might also like to check out our article “Why Should A Person Apply For A Patent? Let Me Count The Reasons!” to understand how your IP is one of your strongest business assets.

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