Is a prior art search or patent ability necessary before filling a Patent?

Question: "Is it necessary to do a patent ability search before I jump into the patent process?"

Andrew’s answer: A patentability or prior art search is not required to file a patent application. However, it is highly recommended for several reasons. First, it allows a patent professional to examine all art that disclose similar features as your invention and may even find one reference that disclose each and every element as your application. If you were to file an application without the prior art search, you will likely receive an office action rejection requiring you to explain how your invention is different than the cited prior art references, which would likely cost more than an initial prior art search. Second, a prior art search is useful to identify how much "art" is within a specific market space and who are the major players. 

Regarding whether to file a utility or design patent application, you should think about what novel aspects you are trying to protect. Is it the function of the invention or the ornamental design? I strongly encourage you to conduct a prior art search before filing your patent application.



For more information on prior art searches, check out this article by Andrew Rapacke of The Rapacke Law Group:
Should I Conduct My Own Prior Art Search?
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