When filing a new patent application, prior art searches are sometimes mistakenly perceived as a superfluous task – reserved for large companies with extensive legal departments. For a growing SME or one investing heavily in innovation, it may seem advantageous to rely on patent offices (such as the European Patent Office or the INPI) to carry out this work.
We submit the request ... and whatever the office arrives at a research report after the deposit ... and will transmit it to the SME! What would this preliminary diagnosis in this context be used in this context?
However, this reasoning frequently heard in the mouth of leaders of SMEs is problematic.
Indeed, this amounts to confusing the administrative and legal process for the validation of a patent application with the crucial strategic exercise which consists for a company to file a patent ... (or not to file this patent!) In knowledge of the facts.
KEY TAKEAWAYS
- Prior art searches secure your patent application before it is filed.
- It allows you to identify existing patents and assess the patentability of your invention.
- It makes drafting claims easier and reduces legal risks.
- It's a strategic approach, regardless of the size of your company.
Place without looking for: a risky temptation
The objective and the need for prior priority
A prior art search involves mapping existing patents. It is therefore the final internal strategic validation step regarding the advisability of filing this patent application, based on the existing competitive landscape.
This step, after writing the invention thesis, consists in building your strategic understanding of your technological and competitive environment.
Filing without conducting this preliminary search is like proceeding blindly. It risks wasting time on back-and-forth communication with the Office that could have been anticipated. Furthermore, this prior art search often leads you to clarify or slightly modify the structure of your claims to increase your chances of a quick and easy success once the application is filed!
In addition, in the process, you will complete and deepen your understanding and intelligence of your competition.
And for an SME, it amounts to bringing into play significant means, time, and risking spoiling this investment by forgetting the last check.
Drafting a patent is a key moment. This step establishes the legal framework of the invention for which you will claim a monopoly on use for years to come.
Without a clear overview of existing patents in the same area, how can you precisely define what makes your invention novel and valuable ? How will you know if your application is a strategic one (from an industrial perspective) or "just" a "marketing" patent?
If the latter are frequent and not useless (especially for a fundraising start-up) you will not have the same international extension strategy for example, and with a considerable potential impact on the budget that you will devote to this title, to this invention!?
Finally, without this analysis, the company exposes itself to another risk : that of having its patent title challenged by a competitor who believes you are infringing on their own patents! Indeed, another common mistake is to believe that once your title is validated and issued by the Office, you are protected from a third-party infringement action. It's certainly not intuitive, but it happens more frequently than you might think.
Indeed your invention can indeed be an improvement or specificity of a more general invention already protected, thus leading to a right of dependence.
So no! When filing a patent application, conducting a thorough prior art search is not a luxury. It's a strategic compass, an effective aid in drafting, and a tool for legal security.
And for SMEs, which have little time and important issues, it can make all the difference.
The illusion of a time and money saving
When a company files a patent application, it knows that a search report will systematically be carried out by the Office (European or national), at its own expense.
Why then fund a prior art search upfront? The logic seems simple: wait for the official results, and then decide whether or not to proceed. On paper, this reasoning seems pragmatic. In practice, it exposes one to major strategic risks.
A frozen deposit, difficult to correct
Drafting a patent application is a crucial : what is written in the first version can only be modified marginally. If, after the fact, blocking or closely related prior art is discovered, it is often too late to effectively adapt the text. It is then preferable to abandon the application and start a new one, provided that this is still possible! But what a waste of time!
Result: reduced chances of obtaining solid protection, and an increased risk of seeing your request rejected - or worse, of being attacked in counterfeiting without having seen it coming!
A strategic vision from the outset
Know your technological neighbors
Conducting a prior art search beforehand is much more than a legal reflex: it's a strategic approach. It allows you to map the players surrounding your innovation territory, identify their positioning, detect any potential dependencies on their patents… and adjust your protection strategy accordingly.
It's also a way toavoid blind spots. The Office might overlook a relevant document, or include one that isn't—the subjectivity of reviewers is a fact, even within a rigorous process. By conducting this research yourself, you maintain control over your own reasoning and strategic approach.
A more targeted writing, therefore more efficient
Having a thorough understanding of thestate of the art before writing is the smart way. By identifying elements already disclosed, one can accurately highlight the truly distinctive characteristics of their invention – those that make the difference.
This is where the key to concise, clear, legally robust writing that aligns with the requirements of the Offices lies.
A measured investment, a decisive impact
No, it is not reserved for large groups!
Contrary to popular belief, aprior art search is not an inaccessible exercise or one reserved for manufacturers with an internal industrial property unit.
TKM offers an affordable service, specifically designed for SMEs.
A profitable approach throughout the chain
Investing in prior art searches lays the groundwork for faster, more relevant , and more cost-effective. Less time spent by intellectual property advisors, a higher-quality filing, and a more effective protection strategy: at every level, this proactive approach optimizes the resources you allocate.
What about large companies?
Prior art searches are not only relevant to SMEs. For industrial groups, they also constitute a strategic lever – but their use is integrated into a different logic.
Large companies often have specialized intellectual property departments, in-house lawyers, dedicated tools… and a significant volume of filings each year. This allows them to tailor their strategy according to the criticality of each invention: fully securing high-potential projects and consciously others with a more exploratory or marketing.
It is not negligence, but an assumed strategic choice, integrated into a global strategy.
Some requests even have the purpose of "occupying the field", to report positioning or to secure research partnerships. In these cases, the deposit becomes as much a protection tool as a communication tool.
In other words, while prior art searches are essential for any company that wants to maximize the value of its patent portfolio, the methods of carrying them out depend on the context: the company's IP maturity level, the number of filings per year, technological or industrial strategy, sector (pharma, tech, cosmetics, etc.), and objectives related to the patent (protection, deterrence, marketing, etc.).
What TKM offers to innovative companies
Combined support: technological and strategic
TKM supports companies – from industrial SMEs to international groups – in structuring their intellectual property strategy. In partnership with patent attorneys, we integrate the technological, competitive, and strategic dimensions of your patent activities at every stage.
The approach is comprehensive: technology monitoring, mapping of existing patents, analysis of technological positioning, assessment of counterfeiting risks, alignment with business strategy… All with a clear objective: to make the patent a real lever for innovation and investment.
And sometimes, even as a communication tool. Some patents are filed to signal a presence in a field, deter a competitor, raise funds, or strengthen a partnership – far beyond mere technical protection. In this context as well, a thorough understanding of one's technological environment remains essential.
A calibrated offer according to your context
Whether you file a unique or more dozen demand each year, our tools and our methodology adapt to your specific issues. We support:
- Start -ups and SMEs that wish to secure their first deposits,
- The Pi directions seeking to optimize their deposit and writing process,
- And the R&D departments which have an imperative and constant need to fully understand their technological and scientific environment.
TKM designs intellectual property as a strategic tool, both defensive and offensive. It also applies this rule and implements it on the fringes of its own R&D activities and patent deposits.
Each deposit is a structuring choice: we help you do it with method, lucidity ... and keep a step ahead of the competition.
A complete software offering
Skipping a prior art search is often a risky gamble – especially when innovation is a key asset for your company's future. TKM helps SMEs and large corporations alike transform this step into a strategic lever.
Looking to secure your next patent application? Contact us for an initial analysis of patents in your field. Together, let's build protection aligned with your vision and objectives.
