Back to archive

Patent: Must a search be done before patenting?

Must a search be done before patenting?

A search is not necessary but advisable. It is very difficult to know if a patent is really novel as we should know not only everything that has been patented in that particular sector, but everything which has been produced and commercialized too, as just the existence on the market of the object we want to protect prevents patenting it. The Italian patent data banks is very deficient not only as it contains just the Italian patents, but also because these are only traceable through key-words, therefore very misleading as the same item could be defined in many ways.

To do a complete search, it is wise to consult the CD ROM on European and International patents, but even then the results are difficult and doubtful, especially if we are not expert in this system. In fact both these searches must be properly weighed: if they assess the existence of a certain product, then they have achieved the purpose at very reasonable costs; but if they show the non-existence of what we want patented, we cannot be assured of anything.

Therefore, the best solution is to trust private researchers who can utilize International data banks, they are more complete and patents are catalogued per classes, therefore, if for instance a new type of electrical appliance has been invented, the search will identify the patents in that sector, independently from the names given by the inventors. Regarding items commercialized without having been patented, it is a good rule to carry out some inquiries at the traders, the wholesalers and also through Internet, to ensure that what we have in mind is not already on some shop shelves.

The risk we incur by not doing a proper search is to run into some opposition and infringement dispute for illicit reproduction of an already patented product.