Why is a Patent Search Important?
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Patent Search US: Why It's So Important
A patent search is very important at multiple stages of securing and protecting a new invention or design. The first patent search should be completed prior to filing for patent protection. The second patent search is conduct by the United States Patent and Trademark Office (USPTO) patent examiner. In both instances, the inventor and the patent examiner are searching for indication that the claimed invention or design has been publicly disclosed. Public disclosure might include prior patent applications (foreign or domestic) covering the claimed subject matter, prior public use or sale of the claimed elements of the invention, or other disclosure of the design by an inventor or manufacturer.
In this article, we discuss various reasons that it is important to conduct a thorough patent search before filing for patent protection with the USPTO.
Why is Holding a Patent Strategically Advantageous for an Inventor or Her Business?
Patent rights allow the inventor (or holder of the patent rights) to exclude others from copying and commercially employing their covered invention. Notably, it does not necessarily allow the inventor to commercially produce or distribute her product. This may require additional licenses or government approval. It does, however, prevent others from doing so. As such, holding intellectual property rights is perhaps the strongest form of competitive advantage for a business. The business has the sole ability to produce the covered invention. This allows her to exclude competitors or to monetize the patent rights by licensing them to another producer.
What are the Benefits of a Patent Search?
Searching for patents is the only way to determine whether your invention (or the claimed elements of your invention) have been publicly disclosed. This information is extremely important when drawing up the patent application. If you are aware of the prior art in the field, you can draft your patent to focus on unique combinations of elements or alternative methods of carrying out the useful function of the invention. This process could also provide you the information necessary to determine whether you should even attempt to patent the invention. If you are not capable of securing patent rights, it may be advantageous strategically to forgo the patent application and focus instead or brand building efforts or other methods of creating a competitive advantage. Not to mention, it will save you some money. The patent filing fees are high, but hiring a legal professional to conduct a patent search or filing for you can be very expensive. Doing the work yourself and identifying a conflicting invention or patent can save you significant time and money. Lastly, you do not want to find yourself the subject of litigation if you commercially product a product that potentially infringes upon another inventor’s patent.
Why is it Likely that A Claimed Invention has Already Been Publicly Disclosed?
Millions of products have been invented and used commercially within the United States. Many more have been invented and used throughout the world. Over 10,000,000 applications for invention patent have been filed in the United States alone. Of course, you will need to do a thorough search of the current market to determine whether your invention is already being used. There are numerous methods of undertaking such a search. But, searching the commercial market alone is not sufficient. It may be the case that prior inventors have gone through the process of applying for patent protections but have lacked the resources to follow through with producing and commercially employing or distributing their invention. As such, your patent application could still fail and you run the risk of infringing upon another inventor’s patent, even if the covered invention has never been disclosed to the public.
From personal experience, it is extremely unlikely that you are the only person to ever think of your invention. It is also highly unlikely that you are the only inventor to take steps that would be considered public disclosure of the invention (or its claimed elements). A such, if you conduct a preliminary patent search and are unable to find a similar product or existing patent, you should still be very cautious. This may give you the confidence to proceed forward with the patent application (either personally or with the help of a legal professional), but it certainly does not mean that a professional patent search will not locate a prior patent or invention disclosure. A professional in this field has extensive practice in searching for existing patents and disclosures. They can often find prior art that the inventor was unable to locate. This is particularly true with regard to international or foreign patent searches. The legal professional will have experience in searching foreign patent databases that may be unknown to the inventor. In any event, the benefits of searching for existing patents or disclosures personally before approaching a legal professional is evident.
How Should I Complete a Patent Search Before Hiring a Legal Professional?
As previously discussed, the patent filing process is expensive. You do not want to waste money by following through with a patent application if their is prior art that has been disclosed and will block the issuance of patent rights. The patent search is a notable portion of that expense, but it is perhaps the most valuable portion. It will tell you whether or not to proceed to the next step.
As such, you should look to the services of an experience legal professional when conducting a patent search. In the US, anyone can perform patent search services. There is no license or professional certification required. Here are the steps you can following in searching yourself before going to a paid professional.
The USPTO provides the public with access to the patent office’s database of filed patents. It contains patents issued since 1976. Prior patent filings are contained in a less search-friendly USPTO system. Google also offers a free patent search engine, which searches patents back to the early 1800s. The only downside of Google is that the search elements available are limited compared to some charged search engines. As such, if you do not have a very good understanding of the specific language to search (I.e., the language that patent practitioners use to describe these sorts of things), it is less likely that you will discover the prior patents that may conflict with your patent application.
My advice is to being with the USPTO database and a Google patent search prior to proceeding with your patent search. If these searches reveal some relevant patents or patent references, then you can then move on to a search database with additional search fields. One such database is FreePatentsOnline.com. This database does a long-term patent search and allows additional search criteria that are not available in a Google patent search. The complexity of searching in such a database entails understanding patent classifications and search techniques. Even if understanding the search techniques and system proves too complicated, having an understanding of these methods when speaking with a legal professional will greatly help in the process.
Who Should I Hire to Do a Patent Search?
First, you should work with a legal professional who has expertise in patent filing. Combining the patent search and filing process can save you money beyond hiring it piecemeal. If you want to hire someone to do a preliminary patent search before approaching a patent filing firm, you can use any number of third-party patent search firms. The most important thing is to verify the quality and reputation of the firm before hiring them. There are lots of patent search firms that offer overly low rates. These firms generally outsource the patent search process to other countries. The individuals conducting the search may not speak English as their first language. Also, transferring some types of technological information overseas can violate US export laws. As such, it is far less likely that you are going to receive the same quality of results as you would receive from a firm with a strong reputation and native english-speaking searchers.
When searching for a reputable patent search firm, a red flag is when the search firm offers several services packaged together with the patent search and filing process. For example, be wary of a company that offers a patent search, engineering support, licensing services, etc. There are too many conflicts of interest in this scenario. The company hopes to make additional money by you proceeding with the filing and production process. They are incentivized to not locate or identify prior art that would conflict with your patent filing. Further, they will want to proceed with the production aspects before the search and filing process is complete.
How Much Confidence Should I Have in a Preliminary Patent Search?
Even if you work with a highly-regarded patent search firm, there is no guarantee that an initial search will reveal all prior art that could block issuance of patent rights. There are a couple of reasons for this. One, the vast body of patent filings is very difficult to navigate. It is possible that a new invention may employ claimed elements from a completely unrelated invention that functions similarly. Further, your invention could have been the subject of a patent application in another country. Conducting a broad international patent search costs extra. If you want a more thorough patent search, don’t skip this process. As such, it is very possible that even a skilled patent searcher could miss existing patents.
Additionally, even the most thorough patent search will not uncover all patents that are pending or have not yet been published. A patent applicant in the US has up to 12 months after an invention has been publicly disclosed to file for patent protection. Further, she can file a provisional patent application, which does not always publish the claimed elements of the covered invention. As such, there is an 24-month period where a patent search will not reveal the information necessary to determine if prior art exists that would block the issuance of patent rights. A patent examiner with the USPTO will have greater access to pending patents than a patent searcher. As such, this makes it even more difficult to rely exclusively on the preliminary patent search results.
What Should I Do If My Preliminary Patent Search Reveals Conflicting Prior Art?
You patent application must sufficiently disclose the invention to satisfy the requirements of the USPTO. Finding existing prior disclosures or patent filings will allow you to amend your application as necessary not to conflict with those existing inventions. There is an art behind broadly and narrowly defining an invention to meet the USPTO requirements. A legal professional will be able to work with the application to potentially secure elements of the invention that do not conflict. Also, combining claimed elements in a particular way to produce a novel function can result in the issuance of patent rights that would otherwise conflict with existing inventions. As such, knowing what prior art exists is one half of the battle when developing a patent application.