Patent Searches: US Patent Search FAQs
|Written by Gene Quinn
Patent Attorney & Founder of IPWatchdog
Zies, Widerman & Malek
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Posted: Jul 20, 2011 @ 8:00 am
If you are interested in filing a patent application to protect your invention it is always a good idea to first conduct a patent search to help make sure that there are no patented inventions that can be found that are closely similar to your own invention. We can help you if you are interested in obtaining a professional patent search, opinion, patentability assessment and/or consultation regarding your invention and how best to proceed. We offer comprehensive patent search services that are aimed at discovering not only what prior art can be found, but also to work with you to determine exactly what can reasonably be expected to be patented, and whether it makes sense to move forward. Our patent search services results in a better understanding of your invention, and lays the foundation upon which to build a patent application, should you choose to move forward.
To get started with a patent search please fill out this contact form and someone will get back to you as soon as possible.
IPWatchdog US Patent Search Prices
|Search, Search Report & Opinion||$1,250||$1,700||$2,150|
|Search, Search Report & Detailed Written Assessment||$1,700||$2,200||$2,700|
Frequently Asked Questions About Patent Searching
- What does your patent search and search report cover?
- What is a patent opinion?
- What is a detailed patentability assessment?
- Do you do patent searches for software and computer related processes?
- Why do I need a search if my invention is not on the market?
- Why do a patent search?
- Who can do a patent search?
- Why can’t I just get a cheap patent search?
- Does a patent search come with a guarantee?
- What about Invention Promotion Companies?
About the Search & Search Report
Our patent search service includes a search of current and expired US patents and published pending US patent applications. Our unique and cooperative approach allows us to become intimately familiar with your invention and puts us in an excellent position to prepare a patent application that has maximum chance of being allowed by the US Patent Office.
To get started with a patent search please fill out this contact form and someone will get back to you as soon as possible.
The search report plus opinion will provide you with a detailed report of the US patents and pending US patent application we have found that are relevant to your invention. Our patent search reports are broken down into categories, namely an A-List, a B-List and sometimes a C-List. The A-List typically contains the primary references, and the B-List typically contains references that show at least one feature from your invention and pertain to the same field of invention as your invention, and the C-List shows references typically outside your field of invention, but perhaps relevant to some extent. Thus, the patent search report will then identify the patents or applications that we feel are most worthy of your attention. The opinion or detailed written patentability assessment will be provided by Gene Quinn, patent attorney and nationally recognized expert in patent law and patent policy.
What is an Opinion?
An opinion will identify those references that are the closest and deserve the most attention and offers a thumbs up or thumbs down assessment of the likelihood of obtaining patent protection based on the invention presented. In the event that it does not look promising some feedback is given regarding how the inventor may wish to proceed and what to focus on moving forward, should the inventor want to move forward. An opinion letter is typically about 1 page in length.
What is a Detailed Written Patentability Assessment?
A Detailed Patentability Assessment differs from an opinion, which is little more than a conclusion, in that you will receive a letter describing the primary references, the differences between the most relevant patents and patent applications found and your invention. This detailed assessment will discuss what, if any, rejections can be envisioned and the arguments or drafting strategies that could be employed to minimize or deal with such rejections in advance, assuming of course we do believe your invention is patentable. The assessment will also describe what collection of features are most unique and likely to lead to a patent being awarded, and articulate which aspects of your invention seem to be missing in the prior art. If we envision difficulty we also offer suggestions and recommendations for continuing to pursue the invention should that be the path the inventor wishes to follow. We also offer suggestions aimed at helping the inventor to better articulate the invention so as to maximize the likelihood of obtaining a patent. In essence, this detailed analysis goes well beyond the basic opinion regarding whether a patent can likely be obtained and will provide you with insight into what can realistically be obtained in all likelihood, spelling out our analysis. This type of analysis can be quite helpful for inventors, and can be shown to prospective business partners or even attached to a business plan. The Detailed Patentability Assessment is typically between 5 to 8 pages in length (depending on the number of closely related references located) and is prepared by Gene Quinn.
About Software & Computer Methods
When the search involves software, computer implemented methods and/or Internet related innovations we greatly prefer to proceed in a slightly different manner.
Virtually all software and computer method innovations can be patented. The question is how many layers of specificity must be placed into the broad definition of the innovation in order to make the invention unique. So we typically approach these searching with the belief that there is something there that can be protected and it is our job to articulate what we think can reasonably be protected and work with the inventor to determine if what we can likely get is broad enough to be worthwhile to pursue.
There is not cheap or easy way to search software or computer methods. It is time intensive if any reliable results are desired, so we almost always quote these search projects at $2,700.
We first search in abbreviated fashion to identify patents and patent applications that generally and broadly relate to the invention. We send those references to the inventor for the inventor to review and ask for feedback regarding similarities and differences. This gives us critical, additional information about the invention because once the inventor sees related patents a more complete description of the uniqueness of the invention can be given. We then go back and do a targeted search, finalizing the search. We then typically provide the search report to the inventor with preliminary analysis, sometimes asking for comment on one or more new patents found. Upon receiving this information back we then finalize the detailed patentability assessment. We find this process to be efficient and leads to a far better search that is targeted to the true innovation. We have used this approach for several years with excellent results. This search leads to far more detailed patent applications when patentable subject matter is located. When we feel there is a low likelihood of obtaining a patent the results have been used by inventors to refine the invention to steer clear of patents located and, in some cases, ultimately come out with an even more exciting and patentable innovation.
Many times I hear inventors say that there is nothing on the market like their invention, so they feel comfortable believing that there are no patents related to their invention. While surveying the market is a wise first step, frequently there are patents lurking that have simply not been used to develop commercial products. Other times I hear inventors say that they have done their own US patent search and have found nothing. Patent searching is an art though, and if you are not familiar with advanced search strategies it is not surprising you cannot find anything, but rest assured there are always patents to find that are at least similar. I have put together a patent search tutorial, which will help give you some strategies. While doing your own patent search is a wise first step, at some point before spending thousands of dollars to obtain a patent you should obtain a professional patent search and patentability opinion.
The patent process can be expensive, so the last thing you want to do is spend a lot of money preparing and filing an application when there is easy to find knock-out prior art that will prevent a patent, or at the very least make any patent that is obtained extremely narrow. For this reason many inventors and businesses will choose to begin the process by paying for some kind of patent search. If knock-out prior art is found then the expense of a patent application has been saved. If no serious road blocks are found the patent search can and will normally lead to a better, stronger patent application and potentially smoother application process. The reason patent searches lead to a better, strong patent application is because the first application filed is absolutely critical. All aspects of your invention must be disclosed, nothing new can be added without compromising the all important filing date (aka priority date). After having done a search the initial disclosure can be specifically written to carefully define your invention so as to focus on what is most likely the patentable feature or components.
Anyone can do a patent search using the online Patent Office database, but this database only contains patents issued since 1976, so such a search is not complete. Google has a patent search engine, but the results provided are organized by a Google algorithm that may or may not cause the most relevant patents to be forced to the top of your search. Indeed, many times people who come to us for a patent application will say that they have already conducted a patent search themselves and have found nothing, and/or they will say that they have never seen anything like it in the industry. Individual efforts by inventors to search the online Patent Office database are helpful, and such study should be undertaken by every inventor. Nevertheless, the best and most reliable patent search will be one that is done by a professional who is intimately familiar with both advanced searching techniques and the Patent Classification System. If you are not familiar with advanced search techniques and the Patent Classification System you are almost certainly going to miss what you are looking for in your own search. I used to do searches for inventors all the time and invariably people would say they found nothing, and every week we find patents that were findable in the Patent Office database, but not located by the inventor. Sometimes these patents are tangentially related, sometimes they are quite close and sometimes they are exactly what the customer has invented. Yes, occasionally we will find exactly what was believed to have been originally invented. But this is the type of search you want. It is better to spend hundreds of dollars now to learn about the prior patents than to spend many thousands of dollars only to learn later that a patent cannot be obtained.
For those who would like to learn how to do a patent search, or at least search for yourself first to see if there is anything that can easily be found, I recommend you read Patent Searching 101, which gives you some tips and techniques.
I know there are places online that will sell you a patent search for very little, but before you purchase such a no-frills patent search it is important to know what you are getting. Many of these low cost patent searches are done overseas by those who may not be familiar with US patent laws, and who may not speak English as their first language. Worse yet, sending information about your invention overseas for a search to be done may violate the US export laws relating to the transmission of technical information. Having someone who does not speak English as their first language and who does not live in the US do a patent search is extremely dangerous. I have no doubt overseas searchers are intelligent, but the way you find references is by knowing how patent attorneys and patent agents would or could describe various features and components. Therefore, intimate familiarity with the English language and common usages of the English language are absolutely essential.
Additionally, if you only pay for a search you are going to get just a list of patents that are relevant, or maybe copies of the patents. When you buy a search you do not get a patentability report, nor do you get to talk to someone to help you interpret the results of the search. Most inventors want and need to have the results interpreted and explained by either a patent attorney or a patent agent, so be careful when you pay under $400 for a search. For this price you just cannot get both a competent search and a professional opinion, and I doubt you could receive a competent search alone for this amount. For a competent, thorough patent search alone you would pay at least $400 for something that is relatively simple and up to $800 to $1,000 for a search alone on something complex.
Unfortunately, no guarantees can be provided. With all patent searches, regardless of who does the search and regardless of whether it is conducted on site at the Patent Office, not all relevant prior art can be guaranteed to be found. Specifically, pending US applications are not published until 18 months after they are filed, so even with an exhaustive patent search there is no way to be sure that everything pending at the Patent Office has been discovered. Additionally, when you do apply for a patent it is extremely likely that the patent examiner will rely on at least some patents that you did not know about. Sometimes this is due to the fact that an examiner rejection could not be anticipated, sometimes it is due to the fact that the description of your invention is unintentionally overbroad, and sometimes it is because an examiner will weave together multiple patents to make a rejection. Receiving a rejection from a patent examiner is as normal and common as paying taxes every April 15th. The key to obtaining a patent is to have an application with sufficient disclosure (both broadly defining and narrowly defining your invention) so that if an examiner does make a rejection or find prior art that you can amend your application as necessary to satisfy the examiner and obtain a patent. Therefore, it is important to understand that the goal of a patent search, therefore, is not to guarantee that there is no relevant prior art that will bar patentability, but rather to investigate whether pursuing with the expense of a patent application makes sense.
While IPWatchdog is not the only company that can provide you a competent patent search, you should beware searches provided by invention promotion companies. We frequently hear from individuals who paid $800 or more for what an invention promotion company claimed was a patent search. All to frequently we also hear that there existed prior art that should have been found, sometimes an exact or nearly exact replica of what was believed to be invented. Part of the invention scam is to tell you what you want to hear. They tell you that they are excited to work with you and recommend a patent search that will cost around $800. Then they come back with great news, they cannot find any patents that relate to your invention. This should be a red flag. It is virtually impossible to look and not find a single patent that is relevant. This is not to say that a patent search is likely to find your invention, but there are well over 8,600,000 issued US patents now and, therefore, it would be quite rare for an invention to address a problem never before considered by anyone. The point is, whether you use IPWatchdog.com for your searches or not, you want a real patent search. If you do not get a real patent search you are not only wasting the money spent on the search, but you quite possibly will be lead to incorrectly believe that you should spend many thousands of dollars to attempt to obtain a patent. For more information about invention scams see The Truth About Invention Promotion Companies.
NOTE: This page was originally posted January 24, 2008 and last updated July 20, 2011.