Software Patent Search: The Key To A Strong Patent

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Andrew Rapacke
Andrew Rapacke is a registered patent attorney and serves as Managing Partner at The Rapacke Law Group, a full service intellectual property law firm.
Software Patent Search: The Key To A Strong Patent

Obtaining patents for your company is a smart decision, but what’s even smarter is conducting a thorough software patent search (prior art search) before filing your patent application.

There are many ways you can use a software patent prior art search to your advantage. The first and most obvious way is to determine if there are existing software patents (prior art) that could prevent you from patenting key features or processes in your software, but there are many other important benefits of conducting a thorough prior art search like:

  • Building a strong patent claim strategy prior to filing your patent application.
  • Getting a better understanding of similar patented technologies and how your software could fit into the technological field.
  • Identifying existing prior art that your technology could be infringing upon.
  • Determining if components of your software invention could be considered improvements to existing prior-art and therefore non-obvious.
  • Conducting R&D project due diligence prior to committing to new R&D projects, which can accelerate and enhance your innovation cycle by identifying both problems and potential workarounds as well as other opportunities.
  • Assessing the strength of your software invention.
  • Find out how strong your idea is if your software is still in development.
  • Gather patent analytics data on other innovative companies in your technological field.

This guide will explain the process of software patent searches and why they’re vital to having a strong patent application. 

Search Software or Professional Search Service? 

Performing an effective patent search is more of an art or skill than a perfunctory task. Beware of services that don’t provide a comprehensive search. Some search software or services do not access both US and international databases. We use these professional-grade research engines to examine over 100 of the world’s patenting authorities, important as only 19% of patent applications are filed in the U.S.

Google offers a patent search function. This is helpful for inventors looking to perform their own preliminary search. However, it lacks search filters and customizations, making it hard to drill down and find the exact patents that will relate to your software. 

Beware of questionable search services offering bargain-basement pricing. They typically return search results that are inaccurate and lacking. They may not search the full USPTO database or only search synonyms of your software invention name. 

For the best and most comprehensive search, you need to work with a licensed patent attorney who’s experienced with software patents. They will know the terminology commonly used by patent attorneys preparing software patents. 

Their experience with software patents and the USPTO database allows them to do a complete and comprehensive database search of the millions of patents already issued and many more applications published.

Prior Art Search

Any reputable attorney will advise that you should have a prior art search performed. This refers to the requirement that your software invention must be new and non-obvious. Anything can be prior art. 

While many people focus on patents and patent applications, a prior art search goes beyond this. It can include books, existing products, and periodicals. If your invention is previously described in a recorded location, then this is prior art, and your software isn’t’ patentable. 

This applies even if application or production of the invention wasn’t possible at the time of description due to lack of technology. There are four types of prior art searches, novelty, validity, clearance, and landscape. 

Using Patent Search Results To Strengthen Your Patent Application

Many inventors make the mistake of thinking that their independent search is enough of a patent search. However, this is similar to someone not trained in the medical field researching on WebMD for their symptom diagonsis. 

You need an experienced patent attorney to do a thorough search of the USPTO database. It’s even more helpful to hire an attorney who has experience in the type of invention you’re looking to patent. 

A misconception we commonly run is founders assuming that they are the first to invent because a particular software or product isn’t on the market. This isn’t always the case. 

Many inventors or small companies will obtain a patent for a particular idea but lack the funding to produce it. This results in patent ownership of ideas and inventions that never make it to market. 

Once you have the results of your patent search, you can work with your attorney to use them to your advantage and determine if it is worth filing a patent application. The first filing of your patent application is critical. All crucial information about your software patent must be disclosed at this time. Adding new information later can put your patent filing date at risk and jeopardizing your priority date. 

A software patent attorney can work with you to craft an initial disclosure that carefully defines your invention as different from similar patents found during your search. This highlights the unique patentable qualities of your invention and reduces the chances of your application getting denied. 

Can You File A Software Patent Application Without A Patent Search?

Yes, no regulation or rule requires you to do a patent search before filing. However, it’s in your best interest to do a search before you go through the expense and effort to file a patent application. 

While the cost of a search is an investment, it’s significantly less than preparing a non-provisional or provisional patent application. This is especially true for software patents that are technical in nature and tend to be on the higher end of the cost scale for preparation. 

Trusted Patent Search Attorneys

Knowledge, experience, and skill are required for a thorough and exhaustive patent search. Working with the right attorney can mean the difference between approval and denial of your patent application. 

Experienced attorneys know how to do proper research to find all possible conflicting patents. There are specific search parameters and terminology that experienced attorneys know to use for a successful search. Should you decide to move forward with a patent application, they will assist you in crafting the correct wording for your application to meet the uniqueness threshold. 

Start Your Patent Process With a Search 

If you’re interested in obtaining a patent for your invention, the best place to start is with a software patent search. For some, it can provide insight into the current patent landscape and whether or not the invention is worth pursuing in its current form. For others, the search will identify areas that are open and ripe for development. 

With the right patent attorney on your side, you can confidently move forward with your pursuit of patents. 

Contact our office today for a free consultation on your software invention. 

Related Article: Debunking the Biggest Software Patent Myths

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