The Importance of Prior Art Searches

Patent applications are expensive. Patent office fees and patent attorney fees combined total thousands of dollars. Filing a patent application in another country will cost more than tens of thousands of dollars.
Even if you spend the money and time to file a patent application, it will be rejected if previous art exists that could contradict patentability standards such as novelty and creativity.

Furthermore, even after inventing, manufacturing, and selling a product at a high cost, it may be discovered that the product infringes on the patent rights of another company, necessitating the discontinuation of production and sales. In some situations, damages can be sought retroactively, dating back to the beginning of production or sale.As a result, it is critical to do prior art research before filing a patent application or developing a product.
Because there is so much information on prior work, it is impossible to look through it all. Therefore, an efficient search must be undertaken.

Types of Prior Art Searches

Prior art searches are classified into two types: patentability searches, which are undertaken before filing a patent application, and conflict (invalidity) searches, which are conducted before manufacture and development. Let’s take a look at each one below.

Patentability Search

A patentability search is a search to see if there are any previous art references that could invalidate the patentability requirements of an invention (novelty, inventive step, etc.).

Prior art references include both patent documents, such as published patent gazettes, and non-patent publications, such as scholarly papers, academic journals, and documents published on the Internet.
Furthermore, patentability may be denied by designs described in design gazettes. Nevertheless, in general, a design can implicitly disclose the external structural features of a product, but it is difficult to disclose the function of each part of the product and the internal connection relationships.

Conflict (invalidity) Search

A conflict search is a search to identify whether or not another person’s patent rights have been infringed or are about to be violated. It’s more typically known as an invalidity search.
The search includes both patent official gazette and published gazettes in which patent applications are pending. This is because the patent application has the potential to be patented in the future, resulting in the creation of a patent right.

Before manufacturing or distributing a new product, it is critical to ensure that no patent rights of others will be infringed upon.
It is possible that you may develop a product at a hifh expense, and when you are about to manufacture and sell it, you may be forced to stop manufacturing and selling the product because of someone else’s patent rights. Not only that, but you may be obliged to pay a significant amount of compensation for damages.

Although a claim for damages requires intent or negligence, the Japanese Patent Law contains a presumption of negligence (Article 103 of the Japanese patent law), and because it is generally difficult to overturn this presumption, the argument that there was no negligence because one was unaware of the existence of the patent right will rarely be accepted.

Cost of Prior Art Searches

The cost will vary depending on how thoroughly the search is completed (for example, whether overseas patents are also searched), but in general, the cost of a prior art search ranges from 300 USD to 2000 USD or more.
It is also helpful for the inventor to do his or her own previous art search. It saves money, and more importantly, ideas for inventions may come to you while you are conducting research.

Expert opinion(Appraisal) and Prior art search

A prior art search differs from an expert opinion(Appraisal).

Prior art searches are conducted in order to obtain a patent for yourself or to ensure that you do not infringe on the patent rights of others.
Howeber, the purpose of an expert opinion is to have a patent attorney examine whether or not another party who is believed to be working on your patent is really infringing on your patent, or to have a patent attorney’s opinion when you receive a warning from another party that your patent is being infringed.

A simple oral appraisal is inexpensive, but when we undertake an appraisal, we make a claim chart and carefully examine whether or not there is infringement of rights, and I sign it as the responsible party, so the cost is expensive. We charge 2000 USD for a simple case and more than 3500 USD for a complex case. The amount of money is also high because of the heavy responsibility.

Please contact us before exercising your rights. We will perform an appraisal. Depending on the results of the appraisal, we do not recommend exercising your rights.

If you receive a warning for patent infringement, please contact us immediately. We will provide you with an expert opinion. In some cases, we may be able to determine the infringement at a glance without an expert opinion. In such cases, an inexpensive legal consultation fee is all that is required.