Prior to filing an application to register a trademark or filing a patent application, it's strongly advised that you carry out a "prior art search".
This is not a mandatory task, but is certainly advisable to ensure protecting your assets from any precedents that have already been registered or filed by third parties, so as not to incur an opposition that may hinder your registration or filing.

What is a prior art search?

It is a preliminary analysis to carry out to verify whether your idea or invention to be placed on the market is actually new. The search is carried out to avoid damaging the rights of third parties and reduce the risks of counterfeiting.

How the search is conducted

A prior art search is the basis of any trademark registration or patent filing procedure and can be carried out:

Autonomously on free, public databases of trademarks and patents - this option is feasible but certainly not exhaustive, and serves to define the validity of your registration or filing;

For a fee on private databases - this search is more reliable precisely because it uses a specific algorithm to carry out a more in-depth search than that which can be obtained with a free tool.

In this first step of the process, is it best to rely on an Intellectual Property (IP) consultant?

Prior art search types

Choosing a consultant undoubtedly offers an added value when seeking to protect the IP rights of a company, especially when searching private databases.
This is because the professional has the necessary skills to correctly gather all the useful data and issue a legal opinion on the feasibility of registering a trademark or filing a patent.
In particular, depending on the type of IP to be analysed, the consultant will offer different types of searches.

Patent search

In order to verify the patentability (novelty and inventive activity) of the industrial invention or utility model to be protected, the prior art search is carried out to:
  • Define that there are no products or processes similar to the patent to be filed, already subject to publication and concession;

  • Ensure that the application to be filed does not contain a risk of infringement of patents previously filed by third parties.

In these terms, the search can be:
  • By name - the name of the owner and/or inventor of the patent;

  • By validity - the subject of the patent or patent application (with reference to cases of invalidity or counterfeiting, to check if the granted patent is valid or null);

  • For clearance – from the description (analysis of the claims) of a project already at an advanced stage, this search examines whether there are any third-party patent rights which could be conflicting with those of the project.

Trademark research

For the purposes of verifying the feasibility (novelty and distinctive capacity) of registering a trademark, the prior art search - extensible to all the territories where the trademark is intended to be used and protected - can be focused on:
  • Identity - for identical trademarks prior to the one to be registered, with respect to product classes and products/services of interest;

  • Similarity – for similar brands which may be confused by phonetic, visual and conceptual assonance with the one to be registered, always with respect to product classes and products/services of interest.

The latter is certainly the most in-depth, favouring the elimination of risks, even if not in absolute terms, and is the most preferable search within the trademark registration process.

Prior art search result

It must be understood that if the search results include findings for which the trademark or invention does not meet the relative requirements, continuing the registration or filing process without making feasible modifications and/or additions may be futile as well as risky.