In short, this is a risk/benefit analysis that could be decided either way depending on the priorities. Like so many business decisions, this decision involves comparing the pros and the cons and deciding the priorities for your particular situation. Most of the pros and cons involve comparing risks and costs.

There are multiple reasons that it would be preferable to have a patent search performed. Sometimes prior art is found that results in a legal opinion that the invention is not patentable because it is not different enough from the prior art that was found in the search. In that case, by having a search performed the expense can be avoided of having a patent application prepared and filed but no patent received. Another reason is that, even if the invention appears likely to be patentable despite the prior art found in the search, a patent attorney can do a better job of preparing a patent application. Knowledge of the prior art allows the patent attorney to describe and define the invention in a way that makes it more likely that a patent will be obtained and that the patent will be a better, stronger patent.

There are also multiple reasons that it would be preferable not to have a patent search performed. One reason is that a patent search and opinion is an expense that would be in addition to the cost of having a patent application prepared and filed. In other words the total cost of getting a patent application on file in the U.S. Patent & Trademark Office would be more if a patent search is first performed before filing a patent application.

Another reason not to have a patent search performed is that a patent search has a degree of unreliability. Because not all sources of prior art are searched, no matter how extensive the search, there is always a significant risk that important prior art exists but is not found in the search. Such undiscovered prior art could later be found by a patent examiner who is deciding whether the invention qualifies for a patent. The reason for the significant risk that important prior art would not be found is that there is such a great quantity of prior art and there are so many different ways to search for it.

Because there is such a large quantity of prior art and so many ways to search for it, a highly reliable search would cost as much or even more than having a patent application prepared and filed. The probability that a search finds the closest prior art to your invention is proportional to the amount of time spent by a searcher as well as the skill of the searcher. Different searchers are likely to find different collections of prior art. A patent examiner may find prior art that a skilled searcher did not find and a skilled searcher may find prior art that a patent examiner did not find. Any relevant prior art that is found in a search should be given to the patent examiner by your patent attorney if a patent application is filed.

So the decision is essentially between two options: (1) whether you should just “give it a try” by having a patent application prepared and filed without doing a search first and accept a greater risk that the patent examiner might refuse to grant the patent because additional prior art that the patent examiner finds is too similar to your invention; AND (2) whether you should have a patent search performed in order to reduce the probability that you will incur the cost of filing a patent application and not receive a patent because the patent examiner will refuse to grant the patent if a patent application is filed and then the patent examiner finds close prior art that was not found in the search.