IP-Academy
Patent and Trademark Search Who needs it?
When searching for information about IPR protection, you may come across terms such as patent and trademark search, but how does one know if it is obligatory or needed, and who conducts these searches?
A patentability search is also known as a prior art, patent or novelty search. It is conducted to find out if the same invention has already been disclosed by someone else, or if a similar invention exists. A patentability search is not obligatory and is conducted when drafting your patent application. Additionally, this type of search can be performed by the patent office upon examination of your application.
A trademark search helps to determine whether the same trademark has already been registered. In most countries, you are not obliged to conduct a trademark search prior to filing; but it should be noted that it is a part of the examination process in many countries.
But how do you know if you should conduct a search? The results of a patent search can help you to decide whether your invention is worth patenting, evaluate your chances of obtaining a patent, and prepare responses to possible Office Actions.
With trademarks the benefits are also considerable: you can avoid accidental infringements, consider your future actions before filing an application, and discover potential competitors who can file oppositions.
For conducting a search, it is recommended that you approach a professional trademark or patent attorney.
Common Questions
Is a patentability (prior art) search mandatory before filing?
No. A patentability search is not obligatory, but it is commonly done when drafting a patent application to understand the landscape and risks.
I found similar patents - does that mean I should stop?
Not necessarily. The next step is to compare your key features to what is disclosed and claimed in the closest documents. Often the outcome is to adjust the invention scope, refine distinguishing features, or draft claims around what is truly new rather than abandoning the filing.
Do I have to do a trademark search before filing?
In most countries, you are not obliged to conduct a trademark search, however, it is highly recommended to conduct thereof before filing to be sure that there are no similar trademarks previously applied for or registered in the jurisdiction(s) of your interest.
Can I file first and deal with potential conflicts later?
Yes, you can, but it is often more expensive. Conflicts discovered during examination or opposition can mean extra official and professional fees, delays, or rebranding costs. A search is typically cheaper than fixing a bad filing strategy after the fact.
How can IP-Coster help at the search stage?
Using our free online tool, you can calculate the cost of a trademark search, see a detailed breakdown of current official fees and our attorney's competitive offers, and evaluate options across countries. Alternatively, you may contact us to find out more about patent and trademark search and their costs.