Published 11/17/2017 by
An Introduction to Patent Searches
A patent search is conducted by an examiner when reviewing an application to confirm that it does not, in fact, conflict with prior art. This is required, of course, as the entire point of filing a patent is to protect your invention from potential infringements by future inventors and businesses. What is optional, however, is the ability of the inventor to conduct a separate patent search prior to filing the application. The USPTO, as well as other international offices, has a public database that allows users to personally examine prior art and decide if their invention is patentable.
“Is it worth it?”
There is the question of, “Is it worth it?” The answer is almost always yes. Not only does it give an inventor the opportunity to determine the viability of applying for a patent on an invention, but provides insight into whatever prior art may be related to the invention. This second point is important, as it allows the inventor become more familiar with “what is already out there,” which in turn provides insight into what is unique about the invention under consideration. At the very least, it his highly advisable to conduct a search before filing a non-provisional patent. Because of the high cost of a non-provisional application, it would be extremely unfortunate if a patent search would have revealed a conflict of claims between the invention in the application and prior art. Conducting a patent search prior to filing can avoid a loss of critical time and money by revealing such conflicts to the inventor.
Hire a Patent Law Professional?
If the budget allows, it is ideal to hire a patent law professional to conduct a search for the inventor. A patent attorney will have a much better understanding of what to look for in prior art, and will be able to determine which patents are more likely to conflict with the invention under consideration. Additionally, a patent attorney will provide a “patentability opinion,” which is their estimate of how likely is that an application will be approved by the USPTO. However, it is important to understand that patent searches are “part art, part science.” Patent attorneys are very skilled at conducting patent searches, but it is impossible for them to be 100% accurate. One cause for inaccuracy is that inventors have the option to not publicly file a patent application. If a patent attorney is conducting a search for a client, the privately filed application (which could potentially conflict with the attorney’s invention) will not be available. The examiner, however, will have access to the private application, and may reject the attorney’s filed application on the basis of prior art. This is not very common, however, and the benefits of hiring a patent law professional to conduct a search far outweighs such unlikely situations as this example.
As a general guideline, conducting a patent search prior to filing an application is recommended if the budget allows it. If the search shows that prior art conflicts with an inventor’s idea, the inventor has the ability to change the scope/focus of the invention before submitting the application (or abandoning it entirely to pursue another idea, saving time and money in the process). Even if there are no discernible conflicts of claims after conducting a search, a thorough knowledge of prior art allows for an inventor or attorney to prepare a much better application that not only has a higher chance of approval, but is much better defined in the claims it sets out to protect.
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Marin Cionca, Esq.
Registered Patent Attorney
USPTO Reg. No. 63899
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