Posts Tagged: "patent search"

There are a number of things that you need to know about the invention and patent process that can help you focus your efforts and know what obstacles lay in front of you. Once you conceive (idea + game plan) you will need to be diligent and not let any grass grow under your feet as you move forward toward defining and experimenting with your invention. Generally speaking, conception without diligence can cause the first person who invents to lose the right to the invention assuming someone else invents after you but files their patent application first. So, the moral of the story is once you have your idea and the game plan move swiftly. The law realizes that so-called “garage inventors” cannot quit their day job, but the law will also require proof that you are consistently moving forward and not shelving the invention for periods of time in favor of other endeavors.

I frequently am told by inventors that they have searched the marketplace and cannot find anything like their invention. I am also frequently told that they have done a patent search and cannot find anything that remotely resembles what they have come up with. While there are many reasons for not finding prior art, just because you do not find prior art does not mean that there is no prior art that needs to be considered. In fact, it would be extremely rare (if not completely impossible) for there to be an invention that does not have any relevant prior art. Said another way, unless you have invented something on the level of an Einstein-type invention there is prior art. Even the greatest American inventor, Thomas Edison, faced prior art for the vast majority of his inventions.

The trouble with explaining what prior art is stems from the fact that everyone already thinks they know what it is. Conceptually we do not want to issue patents for inventions that are not considered new, which seems fair enough. The trouble is defining what is “new.” For now, let’s just say that prior art must be a reference of some type (i.e., a patent or a printed publication) or some type of knowledge or event (i.e., public knowledge, public use or a sale of a product) that demonstrates that the invention in question is not new.

Now comes the curve ball you have probably been expecting. Not all references, knowledge or events that can demonstrate that an invention is “old” or already known can be used by examiners or during litigation against an invention.

I continually preach to inventors the need to follow what I call a “business responsible” approach, which is really just my way of counseling inventors to remember that the goal is to not only invent but to hopefully make some money. Truthfully, the goal is to make more money than what has been invested, which is how the United States Congress defined “success” in the American Inventors Protection Act of 1999. Odds of being successful with one of your inventions increase dramatically if you engage in some simple steps to ensure you are not investing time and money on an invention that has little promise.

If you are really serious about doing a high quality patent search on your own I recommend doing whatever you can to find 1 or 2 patents or patent applications that closely relate to your invention, whether that means in terms of structure or concept. I hear all the time that inventors do searches and cannot find anything relevant, which is unbelievable. If you do a search and find nothing then you are doing something wrong. See No Prior Art for my Invention. Do whatever you have to, and in a pinch to find something quick that is at least somewhat relevant Google Patent Search will do. Then visit Public PAIR and see what you can find out about the prior art found and used by the patent examiner against that patent or patent application.

I have wondered out loud why we don’t have more of a bounce coming off this Great Recession. Certainly the historical dysfunctionality of the Patent Office prior to Director Kappos has something to do with that. It seems to me that open source has also lead many otherwise capable individuals to turn away from innovating. They are not looking for paradigm shifting open spaces and instead toward copying, or simply being blissfully ignorant about whether they are advancing or simply reinventing what others have already invented. The march forward has ceased in part due to the Patent Office backlog and due to an infatuation with open source and reinventing the wheel.

Whatever your opinion of the business model, it is impossible to ignore the fact that Cheryl Milone has turned Article One Partners a major player in the patent research field. Article One is attracting big name members to the Board of Directors, they have started a patent quality review blog and Milone was recently invited to the White House to participate in a round-table event, which she talks about in our conversation. So, without further ado, here is my conversation with Cheryl Milone. We talk patent reform, reexamination, patent litigation, improved patent search and IT databases, claim construction and more.

The last thing you want to do is spend a lot of money preparing and filing an application when there is easy to find prior art that will prevent a patent, or at the very least make any patent that is obtained extremely narrow. Careful review of the patent search report, any opinion or assessment provided by a patent attorney and thoughtful consideration of the patents that are found is critical. Unfortunately, a lot of inventors only give a cursory review of the patents found, thereby missing a great.

Lately we have received a lot of inquiries from individuals who are interested in obtaining a patent search.  Many people incorrectly assume that a patent search will accomplish two goals; namely that a patent search will inform them whether they can obtain a patent themselves and then also whether they would be infringing any patents if they were to move…

Patent and Trademark Depository Librarians read your October 25, 2009 blog entry, USPTO Designates New PTDL, But What About Online, which makes a strong and most welcome call for fully indexed access to all US Patents back to 1790. Many PTDL librarians have called for such access for the past decade. State of the art OCR of USPTO’s image files…

There are ways that inventors can file for Patent protection on their inventions with a limited budget, but even then you have to be realistic in the costs of this undertaking. Again, this is a process, and in order to do it right, there are several steps that need to take place and each of these steps will take time and money. You cannot simply write down on a piece of paper what your invention is, and get a patent.

I was at work today, doing what I usually do. I talk to inventors who want to patent their inventions. I speak to so many different levels of inventors. There are those who have no disposable income at all and are hoping their invention will change that for them; there are those on a tight budget who are hoping to…

As is the case with all recessions or economic downturns, more and more people are turning to inventing.  This is not at all surprising, and is in fact exactly what you would expect.  When finances are difficult people look to themselves for assistance, and to figure out how they can make a better tomorrow without relying on anyone else.  This…

    An updated version of this article is available at:   https://ipwatchdog.com/2013/08/17/patent-drafting-what-is-the-patentable-feature/id=44713/    

About a week ago I received a fairly typical e-mail from an individual who was inquiring about whether I could help provide certain services.  As you can probably imagine, I get inquiries from people looking for all different kinds of legal services, and I also get a lot of e-mails from those who have great ideas and want to sell…