5 Things You Should Know
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.
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 Examiner search for 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?
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!
Order your Patent Search including copies of the references and an attorney opinion letter and up to 30 minutes of phone support – Included for $500. Start Here.
4. What if the patent prior art search finds 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 prior art search a guarantee?
Am I guaranteed to get a patent if I do a patent prior art search?
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.
When should an Inventor do a prior art search?
A prior art search is not required. That is, even if you do a prior art search, and you cite any references you find to the Patent Office for the Examiner to consider (this is required by law!), the Examiner will still do their own search for your invention.
So a prior art search is not required. Is it recommended? Yes – I usually recommend a prior art search. But there are times I don’t recommend a prior art search (or at least I recommend that my client file a patent application before doing a prior art search). For example, if there is a pending bar date.
I talked about bar dates in another one of my other videos, so I won’t waste time talking about that again here. But if you’re up against a bar date, you’ll need to contact a patent attorney immediately and get your patent application filed as soon as possible before it’s too late! Get in to see a patent attorney right away. When you call them to make an appointment, tell them that you’re up against a bar date, and ask for them to get you in as soon as possible – before it’s too late! (I can’t emphasize this enough).
If you’re up against a bar date, for example, if the bar date is in 2 weeks, you don’t want to waste your time doing a patent search. Chances are, getting the results back is just going to eat up that time, and then it’s going to be too late. Then it won’t matter what the results of the patent search are, because if you’re up against the bar date, you’ll be out of luck if you go past that.
In those situations, I’ll often say not to bother with the patent search (at least not right away). Instead, get that patent application (at least a provisional patent application) filed to lock down that filing date.
So when should an inventor do a prior art search? Just about any time before making an investment in the patent process. The patent process is expensive. You don’t want to waste money filing patent applications on things that are already out there.
I usually recommend my clients do a patent search, get the results, and then make a better decision. It may also help your patent attorney write a better and stronger patent application.
You may want to file a provisional patent application first.
It’s not only bar dates you need to be concerned with. Remember the new patent law is a “First-To-File” system – see my video on the new patent law and how it affects inventor rights. Or read this article.
If you file a provisional patent application, then you can do a prior art search. You have 12 months after filing the provisional patent application to file a full utility patent application. So maybe 6 or 8 months after filing the provisional patent application is a good time to do a prior art search. That helps you decide whether to move forward with the full utility patent application.
In summary, a prior art search is not required. It is generally a good idea to do a prior art search. But the timing of the prior art search is what’s important. There may be times when it’s just not feasible to do a prior art search before filing a patent application. Be sure to discuss your matter with a registered patent attorney to help you determine when it is best to do a prior art search.
I hope this answers your question. Remember, it is important to work with an attorney to file a patent application with the US PTO within the time limits set by the Patent law, or you may lose the right to patent your invention.
