Patent search: How to proceed
The first patent application is an important milestone in the life of an inventor and/or entrepreneur. However, in order to avoid legal difficulties or a lengthy and expensive legal dispute, an important step should be taken before the initial application: the patent search. This can prevent the existence of identical or similar patents in Germany or abroad that could conflict with your patent application.
As patent attorneys, we therefore recommend carrying out a comprehensive search before filing a patent application. You can find out what you need to bear in mind in this article.
What is a patent search?
Before applying for a patent, it should be ensured that the new patent differs from other existing patents. This is because a successful patent application requires that the invention to be protected is new and inventive. Only in this case can a successful and legally secure application be filed.
The patent offices, whether national or international, generally carry out a comprehensive examination with existing prior art as part of the patent application process in order to validate the existence of novelty and inventive step.
There is therefore a real risk that one's own potential patent will collide with an existing patent and that the patent application will therefore have to be rejected or at least severely restricted during the examination procedure. Even if no relevant prior art is found in the examination procedure, there is a possibility that third parties will take action against an IP right in subsequent proceedings, such as nullity or opposition, after it has been granted.
In order to be prepared for these possibilities, a patent search is ideally carried out before the application is filed. This involves searching the registers of the various patent offices and determining whether there are identical or similar patents that conflict with your own and harbour the risk of rejection or litigation.
Only when there is sufficient clarity about the relevant prior art a patent application should be filed. One result of the search may be, for example, that the chances of a successful patent application are extremely low and it is therefore advisable not to apply.
Although relevant prior art is usually found, there are often still sufficient chances of success. In this case, the search helps to identify valuable distinguishing strategies from the prior art in order to significantly improve the quality of the subsequent patent application and its chances of success.
This is how you can proceed with a patent search
During a patent search, various databases can be searched for identical or similar patents. Examples of this are DEPATISnet, the database of the German Patent and Trade Mark Office, or Espacenet, the database of the European Patent Office
The intellectual property rights contained in these databases can be searched for relevant keywords that specify the invention, but also for formal data such as inventor or company names.
What do I need to consider when searching for patents?
There are a number of things to consider when conducting a patent search, which is why many inventors and entrepreneurs seek the support of a patent attorney. Incomplete information or imprecise descriptions of the subject matter of protection can lead to the most relevant documents not being found.
You should therefore avoid the following mistakes when conducting a patent search:
- Plan for too little time:
a comprehensive patent search can take some time, depending on the scope and the importance of the potential patent to be filed. Without experience, the search can take several days or even weeks. It is therefore important not to start the search too late. - Only use free databases:
Even if the free databases are already very good and cover the essential data, paid databases usually score points with better translations, a broader database and better findability of the relevant data, especially through AI support. As patent attorneys, we therefore generally use such tools for our searches. - Not searching comprehensively enough:
If only identical patents are searched for or not all relevant features are integrated into the search, there is still a risk that the really relevant documents will not be found. To avoid this, the search should be carried out carefully. An attorney will not only check identical patents, but also similar patents that could be relevant for the assessment of inventive step, for example. - Patent search without legal support:
If you skimp on the patent search, you risk an incorrect or incomplete search, which can cost you more money down the line. Special expertise is required to search the complex databases of the patent offices and to interpret the terminology of patents correctly. This is the only way to correctly categorise the legal situation.
This list is not exhaustive, but serves as a rough guide. We would be happy to advise you on how to proceed in a non-binding initial consultation.
How much does a patent search cost?
The cost also depends on the scope of the patent search. As a general rule, the more time you invest, the more likely it is that all relevant documents will be found and the risk of relevant documents being found later in the patent application process will be minimised.
You can also decide whether you would like an additional legal opinion on the results of the search. The opinion will then include a detailed legal assessment of the legal situation and the market situation in the register with regard to possible patent conflict.
We will be happy to provide you with a reliable list of the costs for a patent search after consultation. We have also written a separate article on the costs of a patent application.
Patent search: Do I need an attorney?
In principle, it is possible to carry out a patent search yourself. However, without the necessary legal expertise or relevant experience in searching, it is difficult to correctly determine the disclosure of the publications and thus their relevance for your own patent application (and your business).
In particular, it requires a great deal of expertise and know-how to identify similar patents that may also pose a risk to protectability. As experienced patent attorneys and attorneys-at-law, we not only have the necessary expertise in patent and trade mark law, but also have unrestricted access to the appropriate tools to carry out a comprehensive search.
After a successful search, we are happy to take over the entire patent application process for you. We are also your contact for patent monitoring. As part of patent monitoring, we check whether conflicting similar or identical patents are applied for in the future. This enables us to take legal action at an early stage to prevent imitations or unlawful practices.
Conclusion
Before applying for a patent, a comprehensive search is recommended. In this way, you can avoid investing in "hopeless" applications and significantly improve the quality of your applications. This can noticeable reduce the likelihood of a rejection of the application and potential legal disputes. In our experience, the effort involved in a patent search usually pays off. We will be happy to advise you on your options for a patent search and application and on all costs incurred.