An inventor should decide whether a new invention is patentable before he/she files a patent application. The first step in the patent process is a “search of the prior art”, undertaken in order to compare the claimed invention to patented inventions. This can be done by searching for “prior art” patents or published applications that may teach, suggest or motivate a person skilled in the art to make the new invention.
The typical search and analysis procedure looks for similarities and differences in (1) structure (or composition for a chemical invention), (2) function, and (3) overall appearance. Structural and functional differences/similarities are important considerations for deciding whether to pursue a utility patent protection.
If the patented inventions found by the prior art search are quite similar to the claimed invention, an inventor may not wish to risk the expense of filing a new patent application. Similarly, a comparison of the overall appearance as to prior patents is important if design patent protection is under consideration.