March 5, 2020 | Written By Elana Bertram
Mistake #4: Skipping A Professional Patentability Search Before You Write the Non-Provisional Application
This is the fourth post in a seven-part-series detailing the biggest entrepreneurial mistakes business owners make. The series will run over the next few weeks so check back to learn more. To read the previous post in this series click here
A favorable patentability opinion does not guarantee that you will be granted a patent. It also does not guarantee that you will not be sued for infringing someone else’s patent. (A “Freedom to Operate” opinion will analyze the totality of the competitive product market and estimate your risk of infringing other patents. These are much more expensive and likely not meaningful to a small company, but ask your patent attorney because it varies by industry.) A patentability search and opinion can make clear to you the best, most cost-effective way to write your non-provisional application so that you have as smooth a path to a patent as possible.
Engaging a professional patent searcher can reveal unexpected products from other industries that won’t appear in a Google search or in the field of obviously competing products. Consider, for example, a screw designed to help mend fractured bones. Even if a screw with a particular twist doesn’t exist in medical devices, it may exist in home construction technology or electronics. Don’t kid yourself that you can find this out from simply searching the internet in English. Remember, an existing patent or published idea doesn’t ever need to become a commercial product in order to prevent you from getting a patent.
By getting, at a bare minimum, a professional patentability search, you can see what you are up against across industries. It gives you and your patent attorney an opportunity to A) see if it’s even worth pursuing a patent at all, B) determine exactly which features about your invention are truly new and worth marketing, and C) help sculpt the non-provisional application to streamline the examination process and build in enough material to anticipate and overcome rejections.
A patentability search will give you a ton of information that may immediately impact your strategy. Discuss with your patent attorney whether a full patentability opinion is also appropriate for your product. If so, spending a few thousand dollars today could save you tens of thousands of dollars and hours of wasted time down the road.
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