Why Inventors Should Not Rely On Their Own Search

By Mark Nowotarski
October 11, 2014

Perhaps you have an idea for a new product simmering in the back of your mind. You’ve done a few Google searches, but haven’t found anything similar. This makes you confident that you have stumbled upon the NEXT BIG THING.

Every day inventors tell me they “haven’t found anything like it,” and while that’s a good start, chances are that they haven’t been looking in the right places.

Before investing additional money and resources, it’s the right time to find out definitively if the invention is unique, determine if there is a market for it, and explore how to make it better.

Inventors should do a search online with a goal of finding two or three competitive products.  If they’re scared to do the search, that’s a good thing, because in my experience, it usually means they’re on the right track.

Yes, the goal should be to find other products in the market that are already attempting to solve the same problem as their invention. That demonstrates that a solution is actually needed. If there is a need by a large enough group of people, then they stand a far better chance of turning the invention into a profitable venture.

Inventors should go to a patent agent or patent attorney with examples of two or three other similar products, and after signing a retainer agreement (which establishes the agent/client relationship), the discussion then turns to the specifics of the product including drawings, mockups, and/or prototypes.

At this point, the agent or attorney will do a more thorough search of the U.S. Patent Office and other applicable databases in the United States and/or internationally.  They are determining if this invention is indeed unique, or if there are even more, similar patented products.

Some inventors consider doing the search of the Patent Office on their own, but there are several downsides to this plan. Their emotional attachment to the invention will cloud their judgment, and they will steer away from finding other products that are similar. Although chances are they have already identified a few other competitors, searching the U.S. Patent Office is a more intense process.  From my experience with clients who have done their own search, they have ignored similar products that have already been patented because they don’t want to know that their idea isn’t as unique as they once thought it was.

However, finding additional similar products does not mean that all is lost. The strategy changes to comparing the proposed invention with the patented one, and discussing ways to improve it and make it patentable. A good patent agent or attorney will provide objective insight at this phase. The process is to take the invention, ignore the parts that have already been incorporated into another patent or patents, and the remainder is a patentable invention.

For example, did you know Thomas Edison did not invent the light bulb? Another inventor had already obtained a patent on the basic idea of a light bulb (creating a vacuum of air in a glass bulb, and the need for a graphite filament) but it was Edison who invented a patentable method to consistently attach the white-hot filament to the lead wires coming in the bulb, and to ensure a uniform diameter of the filament, which became the light bulb that changed the world.

After an invention has been protected with a provisional patent application, inventors will be able to share their idea with specific people with the goal of helping get to the next step. Once a provisional patent is on file, the clock starts ticking toward the one year deadline to file a nonprovisional patent application.

Inventors need to be prepared for a lot of work in that year, ranging from conducting market research to assess demand and profitability, to getting set up with a manufacturer, and investigating funding sources.  If after that it’s determined that the idea is commercially viable, it’s appropriate to more fully protect the idea with a nonprovisional and perhaps even international patent applications.


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The Author

Mark Nowotarski

Mark Nowotarski is the President of Markets, Patents & Alliances L.L.C..He is a registered US patent agent specializing in business methods. Prior to being a patent agent, Mark was a Corporate R&D Fellow for Praxair Inc., and a named inventor on 17 US patents. Mark has an MS in Mechanical Engineering from Stanford University and a BSE in Aerospace, Mechanical Sciences and Engineering Physics from Princeton. He’s also an avid mushroom hunter and president of the Rotary Club of Darien CT.

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.

Discuss this

There are currently 7 Comments comments.

  1. American Cowboy October 13, 2014 10:52 am

    I generally agree with this analysis, but it comes back to the question of filing a provisional as a cost saving measure. I wonder if we can get a dialog going here on how much less a provisional costs vs a non-provisional, both as prepared by a registered patent agent or attorney mindful of the requirements that section 112 be met by both.

    In my practice the reduction in expense is negligible, because in order to know what to put into the spec, you need to know what you are going to claim, so you need to have at least in your mind, crafted what that claim looks like and how it is distinguishable from the prior art.

    Perhaps the biggest saving is the reduce amount the PTO charges for filing a provisional vs a non-prov.

  2. Donal O'Connell October 13, 2014 11:24 am

    hello

    I wrote on paper on patent searching

    I am happy to share it as it may contribute further to this discussion

    Paper is available here …

    http://www.prospectip.com/images/downloads/Prior%20Art%20Search_the%20gold%20standard%20%5BF%5D.pdf

    Best regards

    Donal

  3. Anon October 13, 2014 12:47 pm

    Donal,

    I receive a “page not found” message for your hyperlink.I also cannot locate the article either on your “news” page, nor with your site’s search function.

  4. Alexa Jackson October 20, 2014 12:51 am

    I agree with this article. Aside from a more thorough research, patent lawyers can come up with a strategy that will get you through the patent application process faster and eventually get fast approval of your application.

  5. Mark Nowotarski October 29, 2014 10:50 am

    @American Cowboy: You raise an excellent point. It’s hard to say what a “provisional” should cost since the provisional itself could range from an idea written on a napkin to a professionally written application. This is where the skill and experience of a patent agent/attorney is so important. He/she needs to review the entire situation with the inventor in light of how well developed the idea is, what the budget is, what the business plan is, and perhaps most importantly, what the competitive pressures are to determine what should be filed and when.

  6. Mark Nowotarski October 29, 2014 10:52 am

    @Alexa: I glad you raised the issue of speed of approval. Clearly the more homework you do up front, the easier it will be to get your patent approved quickly.

  7. Warren Norred December 14, 2014 2:50 am

    Good article! I would add that having a patent search done by a professional helps to fight allegations of willful infringement, in the off-chance that you wind up in litigation.

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