When filing a new patent application, prior art search is 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 file the application… and whatever happens, the Office will produce a search report after filing… and send it to the SME! So what would be the point, in that case, of carrying out this preliminary diagnosis yourself?
Yet this reasoning, frequently heard from SME leaders, is problematic.
Indeed, this amounts to confusing the administrative and legal process of validating a patent application with the crucial strategic exercise that consists, for a company, of filing a patent… (or NOT filing it!) with full knowledge of the facts.
KEY TAKEAWAYS
- A prior art search secures your patent filing before you submit it.
- It helps identify existing patents and assess the patentability of your invention.
- It makes drafting claims easier and reduces legal risks.
- It’s a strategic approach, whatever the size of your company.
- Prior-art research secures your patent application before you file it.
- It helps identify existing patents and assess the patentability of your invention.
- It makes drafting claims easier and reduces legal risk.
- It’s a strategic step, whatever the size of your company.
Filing without searching: a risky temptation
The purpose and need for a prior art search
A prior art search consists of this step of mapping existing patents. It is therefore the last internal step of strategic validation of the case for filing this patent application, based on the existing competitive landscape…
This step, carried out after drafting the invention disclosure, involves building your strategic understanding of your technological and competitive environment.
Filing without carrying out this preliminary search means moving forward blindly. It means risking wasted time on back-and-forth exchanges with the Office that could have been anticipated. Moreover, this prior art search will often lead you to clarify or slightly adjust the structure of your claims, increasing your chances of a quick, smooth success once the application is filed!
Along the way, you also complete and deepen your understanding and intelligence of your competitors.
And for an SME, this means committing significant resources and time, with the risk of jeopardising that investment by skipping the final check.
Drafting a patent is a key moment. This step sets the legal boundaries of the invention for which you will claim a monopoly of use for years to come.
Without a clear view of existing patents in the same field, how can you precisely pin down what makes your invention new and valuable? How will you know whether your application is a strategic one (from an industrial standpoint) or “just” a “marketing” patent?
If the latter are common, and not without value (particularly for a start-up raising funds), you won’t pursue the same international extension strategy, for example, and this can have a considerable potential impact on the budget you devote to this title, to this invention!?
Finally, without this analysis, the company exposes itself to another risk: having its title challenged by a competitor who believes you are infringing on their own patents! Indeed, another common mistake is believing that once your title has been validated and granted by the Office, you are protected from a third-party infringement action. It’s certainly not intuitive, but it happens more often than you’d think.
Indeed, your invention may well be an improvement on, or a specific application of, a broader invention that is already protected, resulting in a right of dependency.
So no! When filing a patent application, carrying out a thorough prior art search is not a luxury. It is a strategic compass, an effective aid to drafting, and a tool for legal protection.
And for SMEs, who have little time and high stakes, it can make all the difference.
The illusion of saving time and money
When a company files a patent application, it knows that a search report will systematically be produced by the Office (European or national), at its own expense.
So why fund a prior art search upfront? The logic seems simple: wait for the official results, then decide whether to proceed. On paper, this reasoning seems pragmatic. In practice, it exposes you to major strategic risks.
A frozen filing, hard to correct
Drafting a patent is a defining step: 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 afresh, provided that is still possible! But what a waste of time!
Result: reduced chances of obtaining solid protection, and a higher risk of seeing your application rejected – or worse, finding yourself facing an infringement claim without having seen it coming!
A strategic vision from the outset
Know your technological neighbours
Carrying out a prior art search upfront is much more than a legal reflex: it’s a strategic approach. It allows you to map the players operating around your innovation territory, identify their positioning, detect any potential dependencies on their patents… and adjust your protection strategy accordingly.
It’s also a way to avoid blind spots. The Office may overlook a relevant document, or include one that isn’t relevant – examiner subjectivity is a fact, even within a rigorous process. By carrying out this research yourself, you retain control over your own reasoning and strategic approach.
More targeted, and therefore more effective, drafting
Having a thorough understanding of the state of the art before drafting is the smart way to go about it. intelligently. By identifying what has already been disclosed, you can precisely highlight the truly distinctive features of your invention – the ones that make the difference.
This is where the key lies to concise, clear, legally robust drafting that meets the Offices’ requirements.
A measured investment, a decisive impact
No, it’s not just for large groups!
Contrary to popular belief, a prior art search is not an inaccessible exercise, nor is it reserved for manufacturers with an in-house industrial property unit.
TKM offers an affordable service, specifically designed for SMEs.
A profitable approach across the whole chain
Investing in prior art searches upfront lays the groundwork for faster, more relevant and more cost-effective drafting. Less time spent by intellectual property advisors, a higher-quality filing, a more relevant protection strategy: at every level, this foresight optimises the resources you commit.
What about large companies?
Prior art searches aren’t relevant to SMEs alone. For industrial groups, they also represent a strategic lever – but their use follows a different logic.
Large companies often have dedicated intellectual property departments, in-house lawyers, specialised tools… and a high volume of filings each year. This allows them to calibrate their strategy according to the criticality of each invention: fully securing high-potential projects, and knowingly forgoing others that are more exploratory or marketing-oriented.
This isn’t negligence, but a deliberate strategic choice, built into an overall strategy.
Some applications are even filed to “stake out the territory”, signal a positioning, or secure research partnerships. In these cases, the filing becomes as much a protection tool as a communication tool.
In other words, while a prior art search is essential for any company that wants to maximise the value of its patent portfolio, how it is carried out depends 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 the objectives tied to the patent (protection, deterrence, marketing…).
What TKM offers 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 industrial property 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 infringement risks, alignment with business strategy… all with one clear goal: to make the patent a genuine lever for innovation and investment.
And sometimes even a communication tool. Some patents are filed to signal a presence in a field, deter a competitor, raise funds, or strengthen a partnership position – far beyond mere technical protection. Here too, a thorough understanding of your technological environment remains essential.
An offer tailored to your context
Whether you file a single application or several dozen each year, our tools and methodology adapt to your specific needs. We support:
- start-ups and SMEs looking to secure their first filings,
- IP departments seeking to optimise their filing and drafting process,
- and R&D departments that have a pressing, ongoing need to fully understand their technological and scientific environment.
TKM sees intellectual property as a strategic tool, both defensive and offensive. It applies this same rule to, and puts it into practice in, its own R&D activities and patent filings.
Every filing is a defining choice: we help you make it with method, clarity… and stay one step ahead of the competition.
A complete software offering
Skipping a prior art search is often a risky gamble to take – especially when innovation is a key asset for your company’s future. TKM supports SMEs and large groups alike in turning this step into a strategic lever.
Want to secure your next patent filing? Contact us for an initial analysis of the patents in your field. Together, let’s build protection aligned with your vision and objectives.