Patent Searches

Patent searches can vary greatly in scope and cost. The way US patent laws are written, almost any publication, from almost anywhere in the world, can be used against your invention. Therefore, a comprehensive search could easily cost more than the patent application itself. Upon the filing of a regular (non-provisional) utility patent application, the patent office conducts a search for you - regardless of whether you have performed a search. The patent office search can include US and foreign publications as well as non-published US patent applications not accessible to the public. The latter are known as “secret prior art”. Nobody can search this except the patent office.

There are various pros and cons to consider in deciding to pay for a search. One disadvantage is that if the search does not disclose anything, the money spent on the search would arguably be wasted. Also, you (and your attorney or agent) are under a legal obligation to disclose anything to the patent office that materially affects the patentability of your invention. So, some would argue that you are doing the examiners’ work for them.

Benefits of performing a search include gaining knowledge of the art that aids to write a better patent application thus “writing around” the prior art. Also, discovering an invention identical to yours would arguably save you the expense of trying to obtain a patent on something that is likely not patentable.

Another important advantage of performing a search has to do with identifying existing patents that you may infringe. The patent office does not assess whether or not you infringe another patent. They merely determine if any patents or other publications teach your invention thus rendering it unpatentable.

The scope of the search can vary greatly depending on budget and other factors. I often perform a “basic search”. This search is limited in scope to the United States Patent Office database of issued patents and published patent applications in the analogous art (i.e. in the same arena as your invention). This is a limited search (hence a lower fee). It does not include a detailed analysis of each prior art reference that I find. I can also perform more detailed searching and analysis with the associated costs varying proportionately. The choice here usually comes down to budget and the perceived value of the invention.

Last Updated ( Monday, 22 December 2008 18:43 )
 

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© 2009 Ronald J. Koch, P.E.

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