When to do a Patent Search?

By Gene Quinn on September 12, 2008

QUESTION:

I have done a lot of research on the patent process and believe using the Invent & Patent System will be most helpful at this point.  Also at what point do I need to have a patent search done and what needs to be submitted for a search.

ANSWER:

When to actually get a patent search done is a matter of choice.  Typically what we suggest is that inventors start by filing a provisional patent application.  You can either do a search before this filing or after the filing.  The search and patentability assessment costs ranges from $1,500 to $2,500, depending upon the technology involved, and to prepare and file a provisional patent the charge is likewise about $1,500 to $2,500.  So many will just decide to file a provisional patent application to get the ball rolling and obtain “patent pending” status and then on the road to filing a nonprovisional patent a search will be done.


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Doing a search first before any patent application is filed is a good idea.  By doing a search you will be able to determine whether it makes sense to move forward and what, if any, rights could be possibly obtained.  In an ideal world everyone would start with a search, file a provisional patent application and then within 12 months file a nonprovisional patent application.

The reason not everyone chooses this path is because the cost of a search is not insignificant given the cost of preparing and filing a provisional patent application.  Additionally, a primary benefit of a provisional patent application is to record your invention and get an early filing date.  Provisional patent applications are also quite helpful because you can obtain patent pending status quickly and cheaply – at least compared to the cost of a nonprovisional patent application.  With a provisional patent application you get the ability to wait up to 12 months to determine whether moving forward makes sense.  So you can lock in your rights and then see if your invention gains traction before a large expenditure.  For this reason many will choose to simply skip the search at the provisional stage and then if you decide to move forward then do the search.

We have a patent search questionnaire that we use to collect information regarding an invention.  We also have a patent application questionnaire that we use to collect information for the purpose of preparing a provisional patent or a nonprovisional patent application.

Once we know how you would like to begin the process we send you a representation agreement that outlines the services to be perfromed.  Once we have a signed representation agreement we will take payment via credit card, or you can send us a check via mail.  Once the funds have been received and have cleared you will be sent the appropriate questionnaire and our process begins.

If you would like to move forward let me know.  If you would like to speak with someone first please let me know and I will have my assistant contact you.

The Author

Gene Quinn

Gene Quinn is a patent attorney and the founder of IPWatchdog.com. He is also a principal lecturer in the PLI Patent Bar Review Course and an attorney with Widerman & Malek.

Gene’s particular specialty as a patent attorney is in the area of strategic patent consulting, patent application drafting and patent prosecution. He has worked with independent inventors and start-up businesses in a variety of different technology fields, but specializes in software, systems and electronics.

is admitted to practice law in New Hampshire, is a Registered Patent Attorney licensed to practice before the United States Patent Office and is also admitted to practice before the United States Court of Appeals for the Federal Circuit.

Gene is a graduate of Franklin Pierce Law Center and holds both a J.D. and an LL.M. Prior to law school he graduated from Rutgers University with a B.S. in Electrical Engineering.

You can contact Gene via e-mail.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

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