Picking the winning idea: why patent searching matters

In horse racing, for most people, picking a winner relies on a large degree of luck.  Given the lengthy odds for the horse I picked in the Barker Brettell Grand National Sweepstake, mine seems to have run out.

However, for every casual flutter, there are seasoned betters who carefully and consistently pick winners by studying the form, analysing the conditions and surveying the field.  But even then, the sure-fire odds-on favourite can still be beaten at the post.

Likewise, as anybody who has trodden the patenting pathway more than once will tell you, there is no such thing as a guaranteed odds-on winning patent. Battles with the patent offices and unexpected prior art can wreck a promising patent application and ruin its chances of grant.  Most patent applicants only rely on patent office searches to locate and critique the publications that form the prior art against their application.  Worse still are documents raised late on in the prosecution procedure, after patents in other countries have been accepted, potentially forcing a narrowing of scope, a re-evaluation of expectations and, in certain circumstances, the abandonment of entire patent families.

Whilst the largest companies can afford to play the “numbers game” and may even welcome the certainty that a thoroughly prosecuted patent provides, smaller companies or individual inventors are often left frustrated by the “lost” expenditure and the narrow protection forced on them by unexpected prior art citations.  Some never return to the patent table, becoming disenchanted with the whole process.

This is a shame.  For a successful IP strategy, like successful betting, knowledge is king.  The most valuable patents are not only those which protect the most profitable products, but those which have emerged from the prosecution process with broad claims and a full understanding of the relevant prior art.

Of course, not every idea is worth millions and not every patent survives prosecution or is used for litigation.  Smaller companies with a more modest IP spend spread across several, equally-worthy, projects may require earlier commercial certainty than currently offered by the searches obtained from the patent offices which often are not received until well into the patenting process.

As the expert within your field, you may know what patents your competitors have and where your idea sits in relation to these.  However, if this is not the case it is possible to obtain an early steer of the likely prior art that will be encountered by generating patent searches early in the patenting process.  The best IP strategies rely on studying the patent landscape during the product development process and a close monitoring of competitor’s patenting activity.  However this dedication and planning is, in reality, impractical for most companies and most ideas.  Instead, ad-hoc novelty searches are ideal.

Novelty searches can be used to identify the closest prior art documents to your idea.  Although a good patent attorney will always claim your invention as broadly as possible, if the net is cast too wide prosecution risks and costs can quickly mount up.  By searching first, the most relevant documents can be identified early allowing commercial (and board room) expectations to be managed and patenting budgets planned.  If a search is obtained prior to filing, your Barker Brettell patent attorney can then tailor a patent application accordingly, highlighting the deficiencies in the prior art and steering the patent office towards the core of the invention from the off.

Whilst searching prior to drafting the application adds to the initial cost, this expenditure is often saved through simpler and quicker prosecution.  Indeed, early searches may unearth a knockout, free to use, patent that negates the need to file an application at all, or they may alert you to a competitor’s blocking patent.

The complexity, thoroughness and cost of novelty searches vary depending upon the competitiveness of the field and the scope of the invention.  However, fixed-cost novelty searches are widely available and can provide some early financial and strategic certainty.  Additionally, our level of involvement in interpreting the results can also be varied to suit budgets and needs.

Although no search is exhaustive, undertaking additional patent searching can help to maximise your patent spend.  In patenting, like in horse racing, there are no guaranteed winners.  A good idea will get you off to the best possible start, but searching can reveal your chance of success and help to tip the odds in your favour.

If you are interested in patent searching for any of your inventions please contact your usual patent attorney at Barker Brettell who will be happy to discuss whether this is appropriate and will work together with you to develop a winning strategy.