Patent searches are always a good idea, even if your invention is not on the market

I frequently hear inventors ask why they need a patent search. Frequently the question will proceed: I’ve done a search of the market and there is nothing at all like my invention available to be purchased. Many times this will give inventors a false sense of security, leading them to feel a false sense of comfort believing that because they could not find the product to purchase that has to mean 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. This can be for a variety of reasons, and makes patent searches critically important.

One common reason a patent may exist but the product may not be on the market is because the previous inventor was simply unsuccessful in taking the patent to the market. This can happen for a variety of reasons. Maybe the product was ahead of its time, maybe the inventor ran out of funds and the project became abandoned, perhaps the inventor did not have the right connections or stamina necessary to see the project to conclusion. Whatever the case may be, there can be a variety of reasons why a patent has been applied for or issued on an invention that never made it to the market.

Other times I hear inventors say that they have done their own patent search and have found nothing. While doing your own patent search as an inventor is a very good idea, and perhaps much easier now than ever thanks to advances in made with Google Patent Search, patent searching is an art that requires enormous practice. I always encourage inventors do start by doing their own patent search for at least two reasons. First, if you can find something yourself then you save a lot of time and the cost of hiring someone to do a professional patent search. Second, the more patents you read in the area where you are inventing the better. Reading patents and about the inventions of others in a space where you are inventing will pay great dividends. The more you know the more you understand.

If you are inclined to do your own patent search I recommend you read Patent Searching 101: A Patent Search Tutorial and Patent Searching 102: Using Public PAIR.

But beware relying on your own patent search to the point where you convince yourself it now makes sense to spend years of your time working on the project and the many thousands of dollars, perhaps tens of thousands of dollars, you will need to spend to invent, patent and ultimately monetize your invention through licensing or manufacturing. If you are not familiar with advanced search strategies it is not surprising that you won’t find much of anything. But rest assured there are always patents to find that are at least similar in some regards. As of this writing there are presently over 9,270,000 issued U.S. patents. Each year there are over 400,000 new patent applications filed, with well over 1 million patent applications pending, and many hundreds of thousands, if not millions, of patent applications that have gone abandoned and will never issue as patents. That is a lot of prior art and it would be extraordinarily rare for a patent search to come up completely empty and not find any references that are relevant in at least some way.

Are patent searches really necessary?

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. See also When should you do a 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 patent 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.

For more information about the importance of a complete disclosure please see:

• Tricks & Tips to Describe an Invention in a Patent Application
• The Key to Drafting an Excellent Patent – Alternatives
• Turn Your Idea into an Invention with a Good Description
• Working with Patent Illustrations to Create a Complete Disclosure

If your invention relates to software or a computer implemented process please also see:

• Patenting business methods and software still requires concrete and tangible descriptions
• Best Practices for Drafting Software Patent Applications post-Alice

What about cheap patent searches?

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 even speak English as their first or primary 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 or primary 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.

The one big problem I have with recommending low cost patent search services is how will you know whether the search you get back is low quality or not? It is certainly true that sometimes it will be obvious on its face when you get a low quality patent search. For example, years ago I saw a patent search that related to a new and improved hog trap. The invention was intended to trap wild boars, which can be a big problem in some parts of the United States, particularly in the South. The search returned all kinds of plumbing innovations. A pipeline pig, or simply a “pig,” is used to perform maintenance of pipes. So how did a patent search on a wild boar trap return wholly unrelated plumbing inventions and tools? Obviously the searcher saw the word “hog” and went to a thesaurus and found the word “pig” as a potential alternative word choice. Not knowing what the invention was the searcher simply assumed that the “hog trap” was one in the same as a “pig trap” that relates to pipelines. The search was obviously unusable. But what if the search is not obviously unusable? That is the real nightmare scenario.

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, with average, middle of the road complex inventions typically costing $500 to $700 for the search alone.