Importance Of Conducting A Patent Search By Your Technology Portfolio Companies

By George Likourezos, Esq.

Startups and emerging tech companies that are developing innovative technologies in areas such as aerospace, artificial intelligence, biotechnology, cleantech, fintech, materials, and semiconductors, often find themselves questioning whether their innovations, besides making a difference in people’s lives, are worthy of patent protection.  This is because patent protection can provide value to the company funding the research by preventing others from practicing the developed technology and creating business opportunities, such as licensing or selling the patented technology, and receiving research grants.  To determine if a technology should be the subject of a non-provisional (also referred to as a utility patent application), the researcher or company will be best served to engage a patent agent or attorney which will likely advise performing a patent search.  Even though a patent search is optional, this article provides four reasons why it is important to perform a patent search, especially by growing technology companies.

1. Time and Cost Savings

The patent search is much more inexpensive than preparing and filing a non-provisional patent application and prosecuting the same in the US Patent and Trademark Office (USPTO) and if desired, in foreign patent offices. A patent search can reveal references, such as journals and patent publications, that disclose the technology or render it obvious.  Therefore, it is better to find out from a patent agent or attorney that the patent search revealed one or more references describing similar or identical inventions, than learning this from a USPTO examiner months or years after having spent time and money on research and the prosecution of a patent application (and related patent applications) directed to a technology that is not novel, or that marketable claims cannot be secured.

2. Gauge the Scope of the Patent Claims

The patent search results enable a patent agent or attorney to gauge how broad the inventor’s patent claims, which define the scope of protection for the invention, can be drafted.  Without having any guidance based on prior references identified during the patent search, broad claims may be drafted and filed which will be found to be anticipated and/or obvious by the patent examiner based on references that could have been easily identified during a patent search.  Moreover, without guidance provided by conducting a patent search, narrow claims may be drafted and filed which could have been broader in scope.

It is evident that a patent search provides a barometer on the scope of the claims that can be potentially secured and helps answer the question whether that scope is desirable to the research institution, company, or inventor.  That is, a decision can be made not to proceed with preparing and filing a patent application, if the patent search and analysis show that very narrow claims can be secured which can easily designed around by others.  For the same reason, narrow claims will also not appeal to potential investors and licensees if they are granted. Therefore, if it is determined that broad or intermediate claims scope is not likely to be obtained based on the patent search results, the researcher or company funding the research may decide to forego the preparation and filing of a patent application and think of investing resources in another technology where such claims are more possible.

3. Redesigning or Pivoting the Research

The information gleaned from a patent attorney’s analysis of the patent search results can provide guidance for improving or redesigning the invention or research approach. If at least one patent is identified during the patent search that describes a similar or identical technology, the inventor can improve or redesign the technology being developed in a manner that is novel and nonobvious over the identified references. That is, the improvement or redesign of the original technology may be patentable over the identified references, even though the original technology may not be patentable. Further, the patent search may identify “white space” which was not previously known; that is, a technical or scientific area where there are none or a handful of prior references.  This identified “white space” can be ripe and ideal for patent protection to gain a competitive advantage, and to also expand the scientific and technical knowledge. 

4. Think of Additional Inventive Features Not Described in the Literature

If the patent search results indicate there are several to many patents and pending, published patent applications covering the overall inventive technology, an inventor may be able to think of inventive features not disclosed or described by the identified references. That is, if the patent search indicates a particular technology has been previously invented or described in ma technical journal, the inventor can think of additional inventive features for the technology to increase the likelihood of being granted a patent.  These additional inventive features can be described and claimed in the patent application, even though they may not have been included in a prototype.  After the non-provisional patent application is filed, additional features cannot be added. 

It is evident from the four reasons discussed that it is important for technology companies to conduct a patent search, and that it involves a patent agent or attorney who can analyze the search results and provide guidance to the researcher, to aid in determining whether to prepare and file a non-provisional patent application and in making strategic business decisions.

Remember that investing in technology companies carries inherent risks, so it is advisable to consult with financial and legal professionals to ensure a comprehensive assessment of any potential investment opportunity.

A resource you can consider as an investor in conducting your due diligence or assisting your technology portfolio companies is the intellectual property law firm of Carter, DeLuca & Farrell. Carter DeLuca has assisted hundreds of companies to scale and grow, avoid patent infringement, identify investors, and protect their intellectual property, and has also assisted many investors in making informed business decisions when investing in technology-based companies.

For a free consultation made available through Spotlight Family Office Group, please contact us at Info@SpotlightFamilyOffice.com.