Patent Search FAQs
By: Gene Quinn, US Patent Attorney & Founder of IPWatchdog.com
If you are interested in filing a patent application to protect your invention it is always a good idea to first conduct a U.S. patent search to help make sure that there are no patented inventions that can be found that are to closely similar to your own invention. 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. For that reason, it is always wise to start with a patent search.
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 know what you are getting. Many of these low cost patent searches are done overseas by those who may or may not be familiar with US patent laws. 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, so be careful when you pay $200 or $300 for a search. For this price you just cannot get both a competent search and professional opinions.
If you are interested in obtaining a professional patent search and a patentability opinion please contact me. If you are interested in trying to do the search on your own, at least to start, I strongly recommend you read Patent Searching 101.
Below are answers to some of the most frequently asked questions about patent searching.
- Why do a patent search?
- Who can do a patent search?
- Does a patent search come with a guarantee?
- What about Invention Submission Companies?
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 a patent search leads 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. 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 a few hundred dollars now to learn about the prior patents than to spend several 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.
Does a patent search come with a guarantee?
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.
What about invention submission companies?
While IPWatchdog is not the only company that can provide you a competent patent search, you should beware searches provided by invention submission companies. We frequently hear from individuals who paid $800 or more for what an invention submisison 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 submission 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 over 7,000,000 issued utility 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 us 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 Submission Companies.
