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Should I do a prior art search?

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Do I need a patent search?

A question that is often asked by inventors is: Should I do a prior art search before filing a patent application? It is difficult to provide a straightforward answer.

Prior art searches are expensive. Patent searches can provide inventors with information about previous inventions, helping them improve their application quality and avoid submitting un-patentable applications. However, not all inventors should conduct a patentability search before filing their patent application.

The biggest problem with a prior art search is that there is an 18-month blind spot regarding published prior art patent applications. The blind spot prevents any search from finding prior art applications that are not been because the patent office waits 18 months from filing or priority date to publish a patent application.

Therefore, unless an inventor has published or begun selling the invention, a patent search cannot find the invention.

Here are two timelines you need to be aware of:

Non-provisional filed without a provisional.

Provisional filed followed by a non-provisional.

The issue illustrated above creates difficulties for inventors in cutting-edge fields, as they can't see their competitor's relevant inventions. You can only see them if they have either published trade articles or begun the sales and marketing process.

In most patent offices, the person who files first gets the patent, which can be a problem for inventors in a competitive industry. Remember the Alexander Graeme Bell's example. Who remembers the person who invented the telephone second?

So, what should an inventor do?

The best advice and not all situations are the same is simple. If you are working in an area where there is limited innovation, do a prior art search first. 

If you're in a competitive and innovative area, quickly file a first provisional for your invention to secure an early filing date. Then do a prior art search. If the prior art search turns up information that you want to include in your provisional, then file a second provisional. File your non-provisional before the 12-month anniversary of your first provisional.

Menlo Park has you covered.  Our low-cost options for filing provisional patent applications and conducting prior art searches can provide you with valuable information to improve your chances of getting a patent.