You are not required to conduct a patentability search. Still, the value of a patentability search is that if there is a potential problem, you find out early on in the process before you’ve spent a lot of time and money pursuing a patent on an invention that is not patentable. Also, even if you don’t find something that prevents you from getting a patent, a patentability search may find something close that can assist you in drafting the application to avoid a potential problem.
A good place to start is www.googlepatents.com or the www.uspto.gov, both of which have databases of patents and publications previously filed with the patent office. You will want to enter terms that best describe the features of your invention and compare the references with your invention looking for differences. So as long as you can find things that are different, there likely is something that is patentable. Of course, what matters most is finding a difference that matters to a consumer in the marketplace.
The biggest problem with computer searches like this is that if your search term is a little off, there may be a number of patents and publications that don’t show up. Of course, if you find something that is close to your invention, you likely will want to consult with an experienced patent attorney. An experienced patent attorney will be able to evaluate the differences between the reference (referred to as “prior art”) and your invention and evaluate how the Patent Office will likely respond.
If you want greater certainty, or if you are about to invest a large sum of money in advertising and/or tooling related to your invention and want to be sure you have something that has patent potential, then you definitely will want to contact an experienced patent attorney. Not only will an experienced patent attorney have additional databases that can be searched, but also, based upon their expertise, will have a better idea of what terms to use and what to look for in “prior art” references.
Also, some firms have associates in Washington, D.C. who can go to the Patent Office and look through stacks of patents to find things that are similar to your invention. While there are no guarantees that conducting a search will result in obtaining a patent, patent searches can provide value and may be something to consider before you start the patent drafting process.