To search or not to search?

This week sees the EPO run a free online event "Patent Knowledge Week", https://www.epo.org/news-events/events/conferences/patent-knowledge-week.html. The event is, primarily, to show attendees how to use the vast amount of meta-data published by the EPO and other patent offices.  

This event has run in one form or another for the last few years and has generally been focussed at patent information departments in attorney firms or large corporations. However, what makes this year's event different is that there are streams geared towards non-IP professionals and specifically SMEs and Universities.

I am frequently asked whether professional searches should be conducted prior to the filing of a patent application. Good knowledge of the prior art will allow a patent to be drafted to avoid potential clashes with the prior art and this should result in cheaper prosecution and possibly a broader patent.   However, conducting searches and the analysis of any documents that are found during the searches will also incur costs. Thus the costs and benefits of searching need to be carefully balanced. In practice, whether or not to search prior to preparing a patent application is a subject matter specific question. Patent applications for simple mechanical devices will often greatly benefit from a prior art search of patent applications prior to filing whereas patent applications for complex algorithms may be prepared purely using the inventors own knowledge or search of recent scientific papers.

However, searching for earlier patent applications prior to the preparation of a patent application is only one scenario where searching should be considered. When planning to launch a product, it is important to consider obtaining a professional infringement search which aims to identify patents which are potentially infringed by the product.