With Patentability and Freedom to Operate Searches, Each Path Can Yield Risk or Reward.
Like “Paper or Plastic?” the choice involves genuine tradeoffs, and the answer is: “it depends.”
But even more so than the perennial checkout question at the supermarket, the decision as to whether inventors and their counsel should conduct a patentability search prior to investing time and resources into a particular technology must be weighed with careful consideration. A search might uncover clear barriers and could provide a path to navigate the prior art, but some see potential downsides.
The resistance to “slowing things down” with a search is understandable. Inventors are eager to protect their ideas and win the race to market. And, in a first-to-file regime such as the United States, waiting too long to file a patent application is costly.
Conversely, diving right in “feet first” and blindly investing time and money into technology owned by others is not only wasteful, it may lead to an infringement situation that could have been avoided with knowledge gained early on as the result of a search.
Understanding the prudent path forward in each particular situation requires experience, analysis, and a fair amount of expert counsel.
Don’t Allow Your IP Process to Unnecessarily Impede Your Broader Innovation Process.
A patentability search looks to find the most relevant prior art (e.g., patents, patent publications, or other public disclosures) that might affect novelty and/or obviousness and, thus, could guide claim scope should a patent application be filed. A freedom to operate search focuses on the claims of “live” patents to determine the infringement risk of a potential product or process. No search is perfect, as relevant art may be “missed” or not even available at the time of the search (e.g., filed but not-yet-published patent applications).
Potential benefits of a well-executed search include the ability to focus efforts on truly novel aspects of a client’s technology and set reasonable expectations about achievable claim scope and freedom to operate. The best time to conduct a search may be after an inventive concept is sufficiently fleshed-out, but before significant investment in R&D or manufacturing has been made. Large companies, especially, may have the staff and resources to establish a structured search process to achieve these benefits, enabling an efficient patent strategy.
Some clients consider the downsides of such searches. First, the added up-front costs are a given, although these may be minimal in comparison to the costs of prosecuting a patent application filed without taking into account readily discoverable prior art barriers or worse, walking into an infringement situation. Clients also fear that innovation may be stifled should their inventors become bogged down or disheartened by search results. Instead, they prefer that their innovators focus on achieving desired results without being influenced by intellectual property issues, at least during the development phase. If a search is undertaken, the duty to submit relevant art found during a search, as well as possible issues of willful infringement, must also be navigated.
Some are quick to conclude that searching “is the Examiner’s job,” and either shy away from, or even prohibit, any searching. We have found that many (if not most) clients do not search before filing. It is true that filing a patent application does not impart a duty to search, and that a well-written patent application can support a range of claims from broad to narrow, with the hope of ultimately achieving a claim valid over the prior art. However, ignoring the benefits of a search may be akin to throwing out the baby with the bathwater.
Consider a Tiered Approach
A quick search, perhaps even conducted in-house, may cost-effectively guide patent filing strategy, while a more extensive professional search (associated with higher cost and lead time) may be advisable for technology of particularly high strategic importance. By considering these competing issues and integrating searches into the innovation process, inventors and organizations alike may be able to build stronger patent portfolios and maximize their return on IP investment. IP counsel can help you navigate the tradeoffs by learning your technology and goals in order to offer guidance in this area. Having expert insight to steer you toward the optimal solution for your particular situation will remove guesswork and help to insulate your IP strategy from unnecessary risk.
Considering a patentability or freedom to operate search for your next innovation? Let’s talk; we would be happy to begin the conversation and help find the best course of action for you to meet intellectual property goals.