To search or not to search? Business perspective on patent searches

“Startuping” is never easy. A significant investment is required for results that are not guaranteed. However, competitive research – which in the technical domain translates to patent research – can save a great deal of time, cost, and effort.

Consider X. X has an engineering degree and works for the automotive industry. X also enjoys cooking. Once, preparing a Thanksgiving turkey, X places it in the oven for about eight hours. The constant watching, basting, and turning process is daunting. X, being an engineer, approaches this as an engineering problem and comes up with a solution – a new device, one that will be able to reduce fowl cooking time by about 50%. X thinks about starting a new business making the devices and selling through online platforms and dedicated cooking stores in North America and Europe – everywhere there is a habit of cooking whole fowl. X plans to manufacture the devices in China and ship them by sea.

X is considering securing investment and is concerned with counterfeiting. As a remedy, X decides to file a patent.

Y is a designer. On top of being a designer, Y is a new parent, occupied with changing diapers among other things. One night, when the baby sleeps, Y is considering changing a diaper – an activity that will prevent a future diaper rash, but may wake the baby. There is no way of telling whether the diaper is dry. In the morning, Y comes up with an invention – a diaper that will include a moisture sensor and an indicator. Y decides to start a business, arrives at a working prototype, and licenses the invention to one of the biggest diaper manufacturers.

Naturally, both X and Y have great ideas at hand – but will an engineer and a designer be able to run a successful businesses? While being a complex question, it is at least partially addressed through a small but essential step – a patent search. In both cases, the entrepreneurs were quoted 1000USD for a patentability search and 5000USD for FTO search in US – in other words, the questions of novelty and litigation risk were addressed ahead of time, Since both inventions are likely patentable subject matter, looking at the prior art – patent and non patent literature publicly available to date – can provide a huge insight into the success of the business – from both patentability (will my patent application be granted?) and Freedom To Operate (FTO) (Can a product be placed on a particular market without being sued for patent infringement?) perspectives. The availability – and accessibility – of patent information, the abundance of non-patent ques it incorporates, such as assignees, inventors, family filings – all make for the strongest argument pro-patent search. The ability to save the inventor from an expensive patenting endeavor (estimated at 25k USD to arrive at grant) by applying for a known invention, or putting a product on a market that would trigger an infringement claim, can both save time and research and development effort. Furthermore, the results of a search can deem the whole business pursuit unworthy. Moreover, the patentability search can identify patentable points that will guide later application drafting focus, while an FTO search can amend the research and development process to needed design-arounds.

For X, patentability searches indicated that his invention is novel, and revealed no FTO concerns. X proceeded, had his patent granted, and sold his invention through Walmart. For Y, the search identified both patentability and FTO concerns, so pursuit of the venture was deemed not feasible, thus saving a tremendous amount of “sweat equity” and monetary investment.

Alex Levin is an Osgoode Hall Law School LLM in IP 2020 Candidate and a managing partner of Levin Consulting Group, boutique IP consulting firm providing IP portfolio management services to worldwide clientele

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