The First Step in the Patent Process is a Patent Search
The Invention Must be New
Only new inventions can be patented. So before spending money on preparing and filing a patent application, you need to make sure that an effective patent search has been performed to see whether your invention already exists somewhere, either in the marketplace or described in a publication.
A Patent Application Needs to Include Good Prior Art
Also, even if the patent search does not find your invention exactly, it is important to find a collection of close prior art (other similar products already in the marketplace, and documents describing similar inventions).
This prior art must be put in front of the Examiner, and will be cited in your patent application.
Also, this prior art will determine how broadly your invention can be defined in your patent application. This can save time and money in the patent process, by excluding known prior art from the territory claimed for your invention in the patent application.
Patent Attorneys are Already Obligated to Keep Your Invention Secret and Do Not Need to Sign a Confidentiality Agreement
To perform a patent search, a patent attorney must first understand your invention well enough to search for it. Explaining your invention to a patent attorney is safe, since all patent attorneys are under a legal and ethical obligation to keep your invention secret.
This is different from the attorney/client privilege law that protects communications between clients and attorneys. Patent attorneys are required to pass a SECOND bar exam, called the “Patent Bar Exam”, beyond their regular state bar exam. US Patent Regulations that govern patent attorney conduct require that all patent attorneys keep your invention secret — whether you hire them or not.
Since a patent attorney is already under an obligation to keep your invention secret, a patent attorney does not need to sign a Confidentiality Agreement, also called a Non-Disclosure Agreement (NDA). This is similar to revealing your invention to the US Patent and Trademark Office, since they are also under a pre-existing legal obligation to keep your invention secret, and they also will not sign a Confidentiality Agreement or NDA.
What If I Already Searched and Could Not Find My Invention?
I often hear this from new inventors:
“I did my own search — it’s not out there in the marketplace.”
The Marketplace is Not the Only Place You Need to Search
Just because your invention is not in the marketplace, doesn’t mean it’s not in a patent database somewhere. Sometimes people file a patent application, but run out of time, money, or motivation to take their invention to the marketplace. Sometimes people get a patent and sell the rights to a company that just wants to put the patent in a drawer to keep the product off the market.
In fact, there are now over 11 million issued US patents, plus additional published US patent applications. Further, there are many more foreign patents and foreign patent applications.
Nevertheless, most people do NOT search patent databases when they look for their invention. As a result, they may decide to move forward and pay a patent attorney to prepare and file a patent application, even though prior art that teaches their invention could have been found by a professional searcher.
Even If YOU Didn’t Find Your Invention, a PROFESSIONAL Searcher Could Possibly Find It
Some clients will respond that they have already done a search of a patent database, so they don’t need another patent database search. Since they did not find their invention in their search, they are certain that “it’s not out there.” It is certainly true that if they DID find their invention, then it is not possible to get a patent on that invention.
However, if they did not find it, then there are actually two possible reasons:
- It’s really not out there, OR
- It is out there, but their searching did not find it.
One possible reason that their searching did not find their invention is that they did not use professional patent search methods that are needed to effectively search patent databases.
The best way to get closer to the truth is to hire a professional patent searcher that has years of experience searching patent databases.
The Patent Examiner is Also a Professional Patent Searcher and is Trying to Reject Your Patent Application
The Patent Examiner is also a professional patent searcher with years of experience searching patent databases. The Patent Examiner searches the proprietary in-house patent database at the US Patent and Trademark Office. This in-house patent database is NOT accessible to the public, and is updated BEFORE public patent databases.
If the Examiner finds the invention exactly, then the application will be rejected, and it will not be possible to overcome the rejection, since US Patent Law prohibits patents on inventions that are already known to the public. An invention is considered to be known by the public if it is taught in any publication, such as a patent that already exists, or even in a patent application.
YOU ACTUALLY SAVE MONEY If the Professional Searcher Finds Your Invention
You save money because the searcher removes the illusion that the invention was patentable, which means you don’t have to spend even more money on a patent application, and possibly yet more money on later stages of the patent pending process.
Consequently, attempting to save money upfront by skipping a professional patent search before deciding to move forward with a patent application can be very costly in the short term. You could end up wasting money on a patent application that could never be allowed.
But also, attempting to save money upfront by skipping a professional patent search can be very costly in the LONG term. You need to include the results of that professional search in your patent application to obtain a strong issued patent.
Why You Need to Start the Patent Process with a Good Patent Search
All Prior Art Cited to the Examiner Acts as a Shield Against Invalidating Your Patent in the Future
If your patent application issues as a patent, all of the prior art cited in the patent application is assumed to have been considered by the Examiner, and so the issued patent is presumed to be valid in light of all of the prior art cited in the patent application.
Therefore, the more quality prior art that is found by searching up front and then cited to the Examiner, the harder it will be to find prior art that can be used against you later to invalidate your issued patent. The more quality prior art, the bigger and stronger the shield.
Therefore, more searching and higher quality searching up front results in a stronger issued patent. The patent will be more robust against invalidity attack (which involves patent searching by your adversary). If we preemptively find the best prior art, and that prior art is put before the Examiner, then a patent issued from that process will be immune from invalidity attack using those references. A stronger patent is a more valuable patent.
Prior Art Found by a Patent Search Forms a Fence Around Your Invention
Even if the patent search does not find your invention exactly, it is important to find the prior art that is the most similar to your invention. This most similar prior art forms a fence around your invention in idea space.
The claims are the part of a patent application that define your invention. The claims must be written so that they fall within the fence, i.e. they do not include even the most similar prior art, because the Examiner will reject all claims that describe what’s already known. Thus, it is necessary to attempt to find the closest prior art to your invention so that the claims we draft are not too broad.
A Good Search Saves Time and Money During the Patent Process
A good search can save you time and money during the patent pending period by enabling the attorney to draft claims that the Examiner cannot easily reject based on his searching of his in-house patent database. If the Examiner can’t find any prior art that is closer to your invention than the prior art that we found, our claims will also avoid the prior art that the Examiner finds. In this case, the Examiner will feel more comfortable allowing at least some of the claims sooner.
Thus, a good search will encourage fewer Examiner rejections, and will result in Examiner rejections that will be easier to overcome. This saves time by reducing the number and complexity of Office Action Responses needed to achieve allowance of the patent application, thereby increasing the likelihood of an earlier allowance. Also, reducing the number of Office Action Responses needed to achieve allowance reduces the cost to achieve allowance of the patent application.
Search Results Provide Inspiration as well as Useful Technical and Competitive Information
Even if your invention is found by our search, you can learn ways to improve your invention using the search results. This might result in another invention that IS patentable in view of the search results.
If your invention is not found, you will learn about similar inventions that may provide useful public domain technical information on how to implement your invention. You will also learn about competitive products that you may not have seen before.
Why Our Searches Are Better
A Good Patent Search Requires a Professional Patent Searcher
The inventor is typically not a professional searcher, and therefore does not know the right terms and methods to search for and find their invention in a patent database.
There are over 11 million US issued patents, millions of published US patent applications, millions of foreign patents and foreign patent applications, in addition to everything in the worldwide market and on the web that were never patented.
That’s a lot of information to search through, especially if you don’t have specialized training or experience doing patent searching — it’s easy to miss something.
Typically, an inventor searches for their invention and finds nothing. Then, a professional searcher finds the most similar prior art, which is necessary to draft a strong patent application.
Our Professional Searcher Has the Experience Required to Perform a Thorough Search
Our professional searcher searches the specialized Google Patents database using professional search techniques honed over more than 15 years of search experience. The Google Patents database includes both US Patents and US Patent Applications, as well as Foreign Patents and Foreign Patent Applications, and some non-patent literature.
Then, using what is learned searching the Patent database, the non-patent portion of the internet is searched. A detailed and understandable Search Report is prepared that can be presented to potential investors and/or potential partners so they can know that the search was thorough.
We Show You How the Search Was Done
Since we show how the search was done, you as the inventor can see that it was thorough, so you can be confident in the results. We even show you which search strings didn’t find any relevant results.
Most other firms just give you a final search report that includes only the prior art found, but doesn’t show you how the search was done, or where they searched, or how extensively they searched, so you cannot know whether the searching was thorough.
We Also Search Non-Patent Prior Art
Many patent attorneys don’t search non-patent prior art. This is very dangerous, since any publication anywhere in the world can block you from getting a patent.
No Boilerplate Advice to Proceed
Invention Marketing Companies often delegate patent searching to an outside patent attorney that just performs patent searches for that company. Many clients have shared with me the search reports generated by such a patent attorney. What I have found is that the advice to proceed with a patent application is offered regardless of the content of the search results.
By contrast, we offer a personal consultation over the phone, so you can better understand the legal effect of the search results.
Our Consultation Helps You Know Whether to Proceed
After the search report is sent to the inventor, along with a copy of each search result, the inventor is asked to become familiar with the search results. The inventor then selects from among all of the search results the ones that are the most similar to their invention. Then, the inventor is asked to explain on the phone and/or an email how their invention is different from those most similar search results. The resulting discussion between the patent attorney and the inventor helps the inventor to understand how broadly their invention can be protected legally in light of the search results.
Thus, the inventor is helped during the phone consultation to better understand the legal significance of the search results, and then to decide for themselves whether to move forward with a patent application. Also, with this understanding, the inventor is in a better position to decide whether a patent would serve their business objectives.
No Search Can Be Perfect
Another Patent Application Can Prevent You from Getting a Patent, Even If it Wasn’t Published When the Search Was Performed
Most patent applications are published eighteen months after the filing date of the patent application. Thus, there is an 18-month blackout period for patent applications, where such patent applications cannot be found in the patent databases. Further, some patent applications are withheld from publication until the patent issues, which can be three years or more after the application is filed.
That means that no search can find patent applications before they are published, but your patent application can still be rejected by the Examiner based on those patent applications after they are published or issued.
No Two Searchers Find the Same Prior Art
Further, no two searchers find the same prior art. Even Examiners (who are technical experts in their field of search) find different prior art each time that they search during the patent pending period. Therefore, more searchers and more searching is better.
Are You Ready to Start Your Patent Process with a Good Professional Search?
Russ Weinzimmer & Associates, PC is an experienced patent law firm serving clients nationwide. We have the knowledge to represent individual inventors and entrepreneurs, as well as startups. We understand what adds value to a business, and we put that knowledge to work for our clients.
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