Is my invention patentable?
Should I immediately file a provisional application or wait?
How do I ensure that my patent is granted?
Does having a “Patent Pending” status help in attracting investors and venture capitalists?
What are the costs, risks, and time needed to obtain a patent?
If you are seeking an answer to any or all of the above-listed questions, you have just landed at the right article. In this small but highly informative briefing, I will walk you through some of the major benefits of a patent search. Moreover, you will know how a patent search can aid to better decision making during the patent filing process.
According to patent law, every claimed invention is judged against three cardinal principles: novelty, non-obviousness, and industrial application/utility. A patent search uncovers the existing knowledge in the public domain and thus helps in distinguishing the obvious invention from the non-obvious invention. This pre-existing knowledge can be in the form of previously filed patents, research publications, and traditional knowledge.
If you are looking for a zero budget patent search at your own, PatentScope from the World Intellectual Property Organization (WIPO), the US Patent Office Database, Espacenet from the European Patent Office, InPASS from the Indian Patent Office, PQAI - Patent Quality Through Artificial Intelligence, and Google Patents are some of the available options for you.
All the databases have an easy to use interface and provide a very authentic and convenient option for the patent search. Alternatively, you can hire a patent attorney or a law firm based on the availability of budget. In several countries, the respective patent office also offers a prior-art search report after payment of a prescribed fee. I have used these databases for patent search as I do not have access to any paid patent databases. They work great and can be used without any hesitation for a patent search before you approach a law firm or patent attorney.
Working as a Patent Attorney, I have had multifaceted experiences in working with more than 100 inventors across the globe, especially from the USA and Europe. These inventors approached me for patent search on a freelancing website. I will classify them in two categories. The first category inventors were “prudent” inventors: they wanted to know the existing state-of-the-art about the technology before filing a patent.
The second category belonged to “ignorant” inventors: they had already filed a provisional application but still wanted to know the probability of obtaining a patent. In this brief article, I will try to explain the benefits of being a “prudent” inventor in five points. Here are those 5 reasons why I am biased towards a “prudent approach” to obtaining a patent:
Several new-age stock brokers offer you attractive deals to increase the number of traders using their platform. One of the attractive offers is the payment of brokerage only for successful hits. I can bet, no patent attorney or law firm can provide similar offers else they will be out of business very soon! The reason is simple: a mere 11.4% success rate of patent applications.
Analysis shows that the USPTO rejected 88.6% of 2.15 million utility patents filed during 1996-2005. Are you aware of the most common cause of rejection? An existing prior-art. In such a scenario, conducting a patent search can be an extremely fruitful exercise because it helps you in modifying the provisional patent draft and removing the conflict with the existing prior-art(s). In certain cases, a patent search may help you in designing appropriate experiments to improve the existing invention vis-à-vis the existing prior-art.
If you ask me the time needed from patent filing to its final grant, I would probably give this question a pass! The reason behind my reluctance is the completely uncertain time frame needed during various stages of patent prosecution. A patent application progresses via various stages including patent filing, patent application examination, generation of examination reports, and addressing the comments raised by the examiner. If you belong to the lucky lot, it takes 2-5 years. Statistics say the average time taken by major patent offices is about 2-5 years (Figure 1). Although the patent grant procedure can be expedited by paying an extra fee, it is a costly affair in most countries.
If you want the best utilization of resources and funds, better perform a patent search before filing the patent. Research and Development require a copious amount of money to be invested during various stages of product development. A patent search at the ideation stage helps you manage your resources effectively and certainly prevents the unnecessary wastage of money into something that has been already in the public domain. This preserves the precious resources for better and viable patentable ideas.
Generally, innovators hire patent attorneys and law firms for drafting and prosecution of the patent application. Moreover, a prescribed fee has to be paid for filing national and international applications. The average cost of drafting and filing a patent in the USA is in the range of $12000-$50000 for a technology patent with top IPR experts involved in drafting and filing it to the USPTO. Similarly, an Indian patent may cost in the range of Rs. 75,000-1,00,000, or even higher depending on the lawyer fee and patent attorney charges. An approximate cost of filing patents in various jurisdictions have been tabulated in Figure. 2. It is pertinent to mention here that a large part of the fee (Figure 2) goes to patent attorney/ law firms.
Figure 2: The average cost of patent filing in various jurisdictions. The average cost may considerably vary depending on the fee paid to the law firms and IPR experts. India: INR 75,000-1,00,000; China:800-1000RMB; USA:$25000; UK:>$25000; Europe: >$25000.
Should I launch my product in my country or a foreign country? Will my product be able to compete in the marketplace? If such questions bother you, a detailed patent search may answer your queries and help you understand the landscape of your invention. In other words, the technological prowess of your competitors, the areas uncovered by the state-of-the-art, new market opportunities, and strengths of your invention vis-à-vis the competitors can be understood by a patent search. This offers a unique opportunity to improve the invention and fill the existing gaps in the market. In the long run, aptly taken decisions will have a higher chance of success in both commercial and financial terms.
According to the “Shark Tank” theory, investors (Sharks) prefer to invest in novel products that have higher growth potential and offer a sustainable and marketable business model. The statistics show that products that received an offer from sharks had a “patent-pending” status in 81% of the cases. This shows that filing for a patent created a favorable outlook in the mind of “sharks” and consequently raised the chances of funding from investors. Interestingly, the “patent pending” status may not be always helpful because the “sharks” are well-aware about the success rate of obtaining a patent i.e. a small fraction of “patent pending” applications ultimately granted the patent.
To conclude, you must perform a patent search before approaching the patent office. This not only improves the probability of obtaining a patent but will also help you optimize your resources most effectively.