Legal · Software Patents

Should you perform a detailed patent search prior to starting development?

Jeff Perkins Founder, TrustedHeir | SEO & Customer Acquisition Consultant

November 1st, 2016

Is it a best practice to perform a detailed patent search before starting development to see if you are potentially infringing on any existing patents? Should you hire an experienced patent attorney to review any existing patents for infringement? If you find patents that are similar to your idea, what is the best path forward?

Alex Chan Co-Founder at DataNovo, Inc.

November 1st, 2016

As a former patent examiner once examined 200+ patent applications, a former patent prosecutor who drafted 300+ patent applications, a former patent litigator who litigated 30+ cases in district courts, and now a founder, I can unequivocally tell you that you should. 

Critics typically point to the possibility of inequitable conduct as a means by which to discourage companies from conducting prior art searches before patent filings. But ever since the U.S. Supreme Court has raised the standard for proving inequitable conduct, it is almost impossible to allege an inventor knowingly and intentionally deceived the patent office by concealing prior art references that are unknown to the inventor. With this concern no longer a viable one, there are no factual bases to argue otherwise. 

With that said, conducting prior art searches is particularly important to startups and small businesses because of the significant financial resources and serious business capital that they would have to commit to the patent prosecution process. The same is not necessarily true for larger corporate entities because abandoning one patent application is likely going to be negligible in the grand scheme of things, both from the financial and business perspectives.  

Should you hire an experienced patent attorney to review existing patents for infringement? I would counsel against it if you are a small entity. DataNovo (www.datanovo.com), a new AI-based prior art startup, can give you all the relevant prior art in seconds based on a short description of your product. You can then decide whether to proceed with patent filing. It is much cheaper than conventional means and far quicker. 

If there are patents that cover your idea, it's not the end. There are ways around it. This is where good attorneys really pay off, which is one area where you want to commit your capital. The key is to save on the front-end and spend on the back-end, much like software development. Ping me privately so I can give you my personal insights on how to differentiate good v. bad patent attorneys (as a few have done here on FD). 

Jorge Lopez CFO & Chief Strategy Officer, Cofounder at ConquerX - MassChallenge Finalist | altMBA | Mentor @MIT Global Entrepreneurs

November 1st, 2016

Absolutely you must perform that search before. Two main aspects must be clear from the beginning , first if you want to protect your "invention", one patent is not enough for you to protect your invention, you must create a Patent strategy, you must create at least 10 different patents, combining utility patents with design patents, this way your invention will be protected, however this strategy will cost you a fortune, so unless your invention it is really unique, and your business strategy is to leverage that patent, don't focus to much on the patent. Secondly it is most important having a "Freedom to Operate", that something most of the Investor will ask you for, than the patent itself.  

Rupert Meghnot MBA CXO, Burnout Game Ventures, LLC

November 1st, 2016

Perform a patent search before development? Absolutely. Not sure about the level of online delay (4-6 weeks?), regarding what's been filed & what's posted. However, it's still a good idea. There are videos that help. Hire lawyer to troll infringements? We own a patent that has thousands of (potential) infringers. However, while it may pay off in the long (really long!) run - that's all it'll do. We'd rather ID who's doing it right, and partner with them! If you find similar prior art, you need to determine if it's actually making money. If it is, then that may be a sign that you're on the right track. If it's not, then... (it'd be nice if you could find out why). Having said that, a good patent attorney can help you develop a (similar) patentable product.

Rob G

November 1st, 2016

Jeff, as a word of caution, if you plan to do the initial infringement analysis yourself you need to know that reading and understanding claims is key.  It sounds easy, but patent-ease is ridiculously arcane. If you are going to base a go/no-go decision on whether you think you might be infringing i'd get a patent attorney/agent involved. i have half a dozen patents myself and drafted all of the original applications with exception of the claims... claims are challenging. 

Bill Anderson Chief Product Officer at Optio Labs, Inc.

November 4th, 2016

It might make you feel better (and make your investors feel better) to perform a patent search first, but you have to also consider the cost and effectiveness of such a search.  Will a detailed search definitely find all the existing patent claims that might read on your work?  Patent claims are often hard to read, and sometimes written so obtusely as to be hard to search on.  

What will you know at the end of the search?  It would be good if you found out your idea is clearly already well covered by existing patents so you can adjust your strategy accordingly.  However, you are more likely to end up with uncertainty: you will find some patents that might be interpreted in a future court battle to read on your work, and you will not be certain there are not more claims out there that could catch you up later.

And none of this protects you from nuisance suits from "patent trolls" who will sue you regardless of whether or not there is an exact match between their claims and what you actually do.  You still need to pay to defend yourself from these, whether you are right or wrong. 

Patent lawyers will generally advise you to spend your money on them.  Sometimes they are right.  Sometimes you need to get a broader view, which is no-doubt why you asked the question.  

Alex Alanson Corporate, Small Business and Business Affairs/Legal Advisor

November 1st, 2016

Best practice probably yes. However as anything relating to patents and patent lawyers cost a small fortune, and patents are - from my practical experience - not a particularly robust world, make sure you've got funds to do this properly. Also if you don't have a commercial product then its difficult to benchmark the value of the protection required, which definitely fees disproportionate when in start-up phase. I speak as a (recovering?) lawyer and business owner. I'd be all over protecting - on a practical level - your know-how as a start point, and then see how your product development progresses before spending too much here.
Cue consternation amongst IP lawyers..... ;-)

Brian Matlock Principal Attorney, Intellectual Property, Licensing, and Technology Transactions

November 1st, 2016

Jeff, To be clear, while I agree in general with my colleagues, you should view this going down two different project tracks.  First, you want to obtain "clearance" or "freedom to operate" for your product innovation concepts. This involves a patent attorney, preferably one with litigation experience, conducting a freedom to operate search and possibly an informal infringement claim chart analysis to help you assess the risk of any possible patents with one or more claims that "cover" your proposed product concepts.  Secondly, you need to have an attorney or a third party service perform a prior art novelty or patentability search to determine whether your proposed product concepts are patentable in light of the prior art. 

One of the posts mentioned a hidden time frame of six weeks.  Not sure the relevance of that time frame but you should keep in mind that any newly filed patent application will not be published for eighteen (18)  months.  Therefore, whenever your third party performs a search globally using whatever databases and non-patent literature sources they choose to use, those filed at USPTO will only be viewable and searchable after 18 months from the earliest filing. Yes, I totally agree that you need BOTH of these searches to properly assess your risks and business revenue opportunities. Good luck! 

Gregory Giagnocavo Serial Entrepreneur

November 1st, 2016

Look into the relevancy of obtaining a Provisional Patent. That's sort of a stop-gap in some situations. It was for us.
    However, if you are going that route, it's important to not publicly announce your product until after you filed. Note: That was true a few years ago - so check it out to see how that applies in your situation.
   A patent attorney can give you some very good initial big-picture guidance within a budget of $2,000 which might be money well-spent. At least those five hours (Denver rate) will give you a lay of the land if you aren't familiar with patents. I'd do some "self education" online first, so you can at least ask the right questions as relates to your venture.

Karen Rands Compassionate Capitalist & Venture Catalyst

June 19th, 2017

Best Practice - go simple and use the Google Patent search site and search all variations of name and function for what you are planning. This will help you become more knowledgeable as to what is actually out there and save you money when going to actually get an patent. THEN go do your market research to see if there is even a market for your product. There are all kinds of things that have been invented and never saw the light of day because the company had missed the boat when trying to actually develop the product, there was no market and they couldn't get any investors... so they had a nice certificate for their wall for the $30,000-$50,000 they spent on their patent.

I hear from patent holding entrepreneurs all the time that want an investor. Cart before the horse.

Once you know your product can be built (MVP) and their is a market for it and investors investing in that space (you can test the waters with your solution without giving up the secret sauce), then go to a patent agent first. It will cost you 1/3 of what a regular patent attorney would to get your paperwork started. With funding you can go do all the derivatives and build your IP portfolio.

Joanan Hernandez CEO & Founder at Mollejuo

November 1st, 2016

I'm not a lawyer, so take this opinion, just as that as an opinion.

I think Alex's answer is accurate. With that said I can tell you this tale ...

Once I was in an small conference with one of the developers of Opera (the web browser), he specifically suggested against doing research of patents to avoid being polluted with others ideas (I'm paraphrasing). It is better to develops something as a clean room. Judging by the Oracle vs. Google trial (Android), clean room development seems to make sense in the long run.

My 2 cents.