In deciding whether to proceed with a patent application, the prospective applicant must balance the effort and expense of preparing and filing the application against the likelihood of obtaining a patent, and the scope of protection that is likely to be obtained. The marketing value of putting “patent pending” on the product and of having a patent on the product should also be considered. The likelihood of obtaining a patent can be assessed by considering the prior art. The inventor is sometimes sufficiently knowledgeable about the prior art to allow patent counsel to form an opinion about whether patent protection is available for the invention. More often, however, a patentability search of the records of the U.S. Patent and Trademark Office (the “Patent Office”) is conducted to assess the state of the prior art. The USPTO offers free full-text searching of patents back to 1976 at http://www.uspto.gov. Google allows free searching of the entire patent collection. but relies upon scanned images which are sometimes inaccurate. There are also free databases for searching foreign patents, including a free database for PCT patent applications at http://pctgazette.wipo.int/, and EPO and other applications at http://ep.espacenet.com/. Based upon the prior art found in the search, patent counsel can provide an opinion whether patent protection appears to be available, and if so, the scope of patent protection likely to be obtained. A search is not a prerequisite to filing a patent application because the Patent Office will conduct its own search when an application is filed. A search simply provides information so that a decision can be made on whether it would be worthwhile to file a patent application.
Because the full text of all patents is not available online and searchable, the limitations of text searching, and the shear size of the patent collection, no patentability search can be perfect. Moreover, for reasons of economy, patentability searches are usually directed to prior U.S. patents, and not to foreign patents and other publications. Finally, it is not possible to search pending U.S. applications before they are published (and not all U.S. applications are published before issuance). However, experience has shown that patentability searches are helpful in determining whether it would be worthwhile filing a patent application.
A patentability search can also uncover potential infringement problems, although a patentability search is not a substitute for a search directed specifically to the question of infringement. If a substantial amount of money or time must be invested to commercialize an invention, then an infringement search should be considered. An infringement search is a broader search that considers whether there are any patents that would be infringed by using a particular technology.