I am often asked whether a prior art search is required for your invention before you can file a patent application. The short answer is No. A prior art search for your invention is not required in order to file a patent application with the US Patent Office.
There is an affirmative duty to disclose to the US Patent Office any information you have or that you are aware of which is pertinent to patentability of your invention. So for example, if you are aware of a product that is similar to (albeit not the same as) your invention, you are required to disclose this to the US Patent Office.
But the duty to disclose prior art to the US Patent Office is not a requirement that you actively conduct any sort of prior art search for your invention prior to filing your patent application.
Still, here are 3 good reasons for getting a prior art search before you file a patent application for your invention.
1. A prior art search may save you money. We all like to save money. There are millions of people in this world, and many millions more who have gone before you. Most of those people have had ideas, so the chances are pretty good that they’ve had an idea that is the same or similar to your idea. So before you go out and spend thousands of dollars filing a patent application, you should at least check to make sure that the idea hasn’t already been put out there by someone else.
2. A prior art search may give you more ideas or better ideas. Even if your idea is entirely new and has never been done before, a good prior art search should turn up at least a few results that are somewhat related to your field of invention. You may get ideas that help make your invention more marketable. For example, you may want to enhance your invention (to show just how much better your idea is), change your invention (to overcome a problem that you had not thought of before), or add to your invention (making it useful to a larger audience).
3. A prior art search may result in a better patent application for your invention. By knowing specifically what the unique features of your invention are, your patent attorney can write a stronger, more robust patent application. The patent application can clearly state what is better about your invention over what has gone before. Thus, your patent application has a better chance of distinguishing over the prior art when it is examined by the US Patent Office, and there is less chance of your patent application being rejected.
A prior art search doesn’t have to be expensive. Talk to your patent attorney about different options that might be available for your particular invention within your budget.
