Five Things Every Inventor Needs to Know For A Good Patent Search.
One of the first things inventors ask me about is the patent search (sometimes called an “invention search” or “prior art search”). Generally, it is a good idea to conduct a patent search before proceeding too far down the path toward filing for a patent application. However, every scenario is different, and your patent attorney may recommend filing a patent application right away.
This is particularly true given the “new” patent law which became effective in 2013. The new patent law made the U.S. patent system “first-to-file” for most new patent applications that are filed. (Read more about the new patent law and how inventor rights are affected here).
The following are some of the most common questions I get from inventors about the patent search.
1. What is a patent search or “prior art” search?
There are generally two categories of patent searches. The first category, which this article refers to, is a patentability search. That is, the search looks for patents (and possibly for other publications) that show the invention already exists.The second category refers to whether a product infringes a patent. That is not the type of patent search this article is referring to. If you are in need of an infringement search, it is best to work with an experienced patent litigation attorney.
A patent search of the first category (“Can I get a patent for my invention?”) may also be referred to as a “prior art search,” “patentability search,” “novelty search,” or “invention search.” These are basically the same thing, although some law firms may have different types of searches offered under various of these or other names. At Trenner Law Firm, for example, we offer a “Basic Patent Search” and an “Enhanced Patent Search.” Our basic search looks at published patent applications and issued patents. Our enhanced search looks at published patent applications, issued patents, and other references (such as technical journals and Internet publications).
There is no right or wrong search. You just want to make sure to understand what you are paying for before you authorize a search for your invention.
2. Does the Patent Office search patents?
Inventors often ask if the Patent Office requires inventors do their own patent search before filing for a patent. The short answer is no. You are not required to do your own search before filing a patent application. In fact, the US Patent Office will do their own search regardless of whether you have already done your own search. That is, the Patent Examiner will do his or her own search for your invention after filing a patent application if you have not done any search – or if you have done a very extensive (or even expensive) patent search.
Does this mean you can skip the patent search? Technically, yes. But it is often a good idea to do a patent search. For example, if the patent search finds the invention already exists, there may be no need to proceed with the patent process. On the other hand, if the search comes back “clean,” then there may be a good reasons to proceed with a patent application.
It is most common, however, that the patent search comes back somewhere in between. For example, there are some references that disclose aspects of the invention – but not all inventive aspects. In that case, the patent lawyer can use the results of the patent search as a guide when drafting claims for a patent application. For example, the patent lawyer can emphasize what appear to be more inventive aspects of the invention.
3. Can I search patents myself? Or do I need a patent attorney to do a patent search?
Of course there is nothing stopping you from conducting your own patent search. The Internet has made information readily available to just about anyone with an Internet connection. Many databases are free, and those that are paid, usually have small subscription fees. The two most common free databases are Google Patents and the US Patent Office Search Database. Indeed, it may be a good idea to start with your own search to gain a better understanding of the state of the art related to your invention.
Just don’t stop there!
Seek the assistance of a patent attorney. Not necessarily to conduct the search. Indeed, most patent attorneys do not conduct their own patent searches. Often a patent law firm will outsource the search to a qualified searcher or search firm.
Instead, the primary purpose of the patent attorney is to interpret the results of the search. For example, a patent attorney may look at the same reference you look at and see a completely different outcome. That’s because the patent attorney knows what the Examiner is looking for at the patent office, and can help guide the inventor, letting the inventor know whether the reference poses a particular risk of the Patent Office denying a patent for the invention.
Talk to a patent lawyer today!
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4. What if the patent search finds (or doesn’t find) my invention?
Inventors are often weary whether a patent search could mean the end of the road for their invention. For example, if the product already exists, there is no need to continue, right? This need not be the case. Instead, the patent search should be viewed as a stepping stone along the path to success.
What do I mean? If the patent search finds another product that is identical or an obvious variation of the invention, the inventor may decide not to pursue the patent process, saving money that is better spent developing and marketing the product. Many products are huge successes without patent protection.
And the invention may evolve during development. Perhaps some of these aspects are patentable.
5. Is the patent search a guarantee the Patent Office will issue a patent for my invention?
This is a common misconception. No patent search can guarantee a patent will issue for an invention. At least I am unaware of any patent search that can make this guarantee. If someone tells you they guarantee their patent search is bulletproof, reconsider who you are working with.
Why? Just think of the number of databases and references (both online and in libraries across the country – and even around the world). There is no possible way to search and review every single reference that might be related to a particular invention.
Learn More – Watch These Patent Attorney Videos
What is a Patent Search (also called a “Prior Art Search”)
When should you do a Patent Search – a search for your invention?