To Search or not to Search – Patent searching a worthwhile exercise?

We do our best to answer as many patent related queries over the phone for new customers. Often they have relatively simple questions about the patentability of different technologies and assuming they are prepared to disclose the general area they are working in we can give them a rough steer. Other queries relating to Trade Marks or Designs are often usually easy enough to answer without incurring any costs.
There is however one type of query that is far trickier to deal with and that is queries relating to Patent Searching. There are far too many reasons to give here as to why a company would want to conduct patent searches early on in the development of a new product or technology, and all of them are valid, but perhaps the most frequent given reason is to determine if someone else has ‘done it/had the idea before’. It was estimated recently that in excess of €20 Billion is spent in the EU alone every year re-inventing what has already been invented. Therefore, if you are a large organisation with an R&D budget it seems sensible to allocate some of that money to conduct patent searches if only to see what activity there is in the chosen area of technology.
It is worth stressing though that the initial question of has this been done before, will not be answered by a patent search. Firstly patents are not published, in general, for up to 18 months after they are submitted. So that means that patent searches are automatically not up to date, and if someone filed a patent for the exact same idea as you yesterday, we will not find out about it until 18 months from now. Imagine how much time money and effort might have gone into developing prototypes, packaging, distribution and marketing by then only to find out that the product infringes a patent?
Secondly, who’s to say that a patent search will find all existing patents? It would be fairly obvious to search the European Patent Office website but where do you stop. There are at least 140 national patent offices in the world, and while the major ones are linked through mutual databases do you have the resources to search them all? The UKIPO charge roughly €1,000 to carry out searches and allowing attorney time of no less than 5 hours to analyse and review any patents that it finds and you are talking of a bill of at least €2,250 for a comprehensive search in the UK alone. So I would suggest that very few Irish businesses have the resources to carry out an extensive worldwide patent search given that it could cost in excess of €50k.
Finally, what if the product or idea has been thought of already but no patent application has been filed. Well in this case the good news is that you won’t be prevented in all likelihood from bringing your version onto the market (some countries like Ireland have unregistered design rights), but equally you won’t be able to protect your idea as it has been disclosed elsewhere and worse still if you have spent money on patents all your money is wasted because the applications will be potentially invalid. So patent searching alone may not be sufficient.
It seems that small Irish businesses are caught between a rock and a hard place. You want to find out if your product is novel but you can’t afford the budget to do so comprehensively. The solution is not simple or straight forward but the first step is undoubtedly to consult with a qualified Patent Attorney that understands the pitfalls of carrying out searches. I suppose thought the conclusion that must be drawn is that it all depends on how much money you stand to spend on developments or for that matter how much money you are prepared to lose.

For more information or a copy of a FREE guide to Patent Searching mail to: roconnor@cruickshank.ie