Is My Invention Already Patented?

DEREK FAHEY, ESQ.

To answer the question “Is my invention already patented?” an inventor generally needs to conduct a prior-art search. In patent law, prior art includes public disclosures such as scientific publications, patents, and patent applications that existed before the relevant patent filing.

A prior-art search reviews patent databases and other sources to identify documents that may affect whether an invention is patentable. The search is especially useful because the patent examination process focuses heavily on whether the claimed invention is new and non-obvious.

How Prior Art Affects Patent Examination

After a patent application is filed, a United States Patent and Trademark Office examiner reviews the application and searches for earlier disclosures covering some or all of the claimed features. To qualify for a patent, an invention must generally be patentable subject matter, useful, new, and non-obvious.

If the examiner finds one disclosure containing every claimed element, the examiner may reject the claims as not new. The examiner may also combine multiple references and argue that the claimed invention would have been obvious.

Why Search Before Filing?

A prior-art search is not legally required before filing, but many applicants find that its cost is small compared with the time and expense of preparing and prosecuting a patent application. A basic search can sometimes reveal that an invention already exists or help identify features that should be emphasized.

Professional search results can also help patent counsel estimate the probability of obtaining a patent, determine what type of application to file, and develop a more focused claim strategy.

Because patent prosecution can be expensive and may take years, evaluating the relevant prior art before filing can help businesses make more informed decisions about whether and how to proceed.