Patent Searches – Why? When? and How To?

Introduction:

Patent searches determines whether an invention is novel. The ‘novelty’ requirement means that the invention if an apparatus or machine must be physically different from other inventions found throughout the world. If the invention is a process or method, the process or method must include step(s) not used by other processess or methods.  So long as there is at least some minor variation from one invention to another product or process conceived and reduced to practice around the world, your invention is novel. The novelty requirement is easy to meet. Whether or not an invention is patentable normally depends on the invention also being non-obvious. (Washington DC Trip 002See link Novelty and Non-obviousness Requirements for U. S. Patents).

The main resources used in patent searches are: (1)the issued patents database and published  patent applications databases in the U.S. Patent and Trademark office (U.S.P.T.O.); and internet search engines, such as Google or Bing.  If the invention is a physicalproduct, then we also recommend searching on large private selling sites. such as Amazon or Alibaba.

Every patent issued from the U.S.P.T.O. is indexed in the its Classification System which divides the main inventive concept(s) into into Classes and subclasses. When patent application is filed with the U.S.P.T.O., it is assigned to an Art Group that assigns the patent application to primary and secondary class and subclass numbers. When a patent search is conducted, the first step is to identify the primary and secondary class and subclass numbers assigned for an issued patent and a pending patent application for the invention. Once the primary and secondary class and subclass numbers are determined, the issued patent database and the publication application databases are then searched. Note that the issued patent database covers patents issued from 1790’s and the published patent application database only covers filed after 2001. Also note, that the ability to search the class and subclass numbers for issued patents is also limited to issued patents issued after 1969. Information regarding patents issued before 1969 must be obtained by contacting a patent search professional who can then conduct an extensive patent search through the U.S.P.T.O.  For more information, check out the following link regarding Classification system at the U.S.P.T.O.: US Classification System

To conduct preliminary patent searches, it is recommended that you first determine the class and subclass of the invention. This can be done by visiting the U.S. P.T.O. Classification Web Page. To generate a list of patents assigned to a particular class and subclass number, visit the U.S. P.T.O.’s BIB file or IBM’s Patent Resource Web Page. If, after conducting a preliminary patent search, the invention appears to be novel, it may be useful to contact us to review your preliminary patent search results.

Patent Searches:  Are they Required?

The U.S. Patent regulations and governing statutes do NOT required that patent searches be conducted before or after  the patent application has been filed.. If fact, when you file a patent application, part of the filing fee you pay includes a fee for a patent search conducted by the Examiner.  

Usually we recommend patent searches be conducted before filing an utility patent application to help you identify the ‘inventive concept’ underlying the invention and to help you write claims that are sufficiently broad to cover the inventive concept.  A patent search also helps you determine the invention’s  ‘value proposition’ (i.e.  How can the invention be commercially exploited?  What is the invention’s commercial value?  Who bill benefit from the invention who will buy or license the invention? Can the inventive concept be easily avoided by alternative products or methods).  

Some patent practitioners recommend waiting until the invention is completed before seeking a patent search. We disagree.  Patent searches  determine if the inventive concept of an invention is novel. The purpose of a patent search is not to determine whether a particular prototype of embodiment of the invention is novel.   If you focus too narrowly on the patentability of a particular embodiment, then you run the risk your patent will cover only a particular embodiment. Occasionally, inventors conduct a patent search to get a sense of the patent landscape to determine whether it even makes sense to continue the project and whether there may be some available space they could target. Unfortunately, this investigation can be risky because it may obligate the inventor and his patent attorney to file an Information Disclosure Statement citing the patents they found. Failure to inform the Examiner of relevant patents can be grounds to invalidating a patent and may lead to possible recovery of attorney fees if the patent is litigated.

Therefore, unlike some patent practitioners , we normally do not recommend you conduct a patent search to show you about the patent landscape and whether any available space (frequently called “white space”) exists then you will want to do the patent search early .

For more information on doing your own patent search, check out the patent search tutorial material at the U.S.P.T.O. at www.uspto.gov (Seven Step Strategy).

 

Patent Searches:  When Should a Patent Search be Conducted?

Because the U.S patent system is a ‘first to file’ system, we normally recommend inventors file a provisional patent application  as soon as possible.

You can either do a patent search before filing a provisional patent application or after filing the provisional patent application but before filing the non-provisional patent application.  The cost of a patent search and patentability determination by a patent attorney can range from $1,000 to $2,000, depending upon the technology . To prepare and file a the charge will typically range from $1,500 to $6,000, again depending upon the inventive concept underlying the invention, how the invention is framed for optimal commercial value and the number of embodiments.

It is common for inventors of simple to moderate inventions to file a provisional patent application to get the ball rolling and obtain “patent pending” status and then conduct a novelty patent search one to two months before filing a non-provisional patent application. For those inventors developing more complex inventions or who must seek financial support or investors, they often do a patent search prior either before or shortly after filing a provisional patent application.

Because of the changes made by the 2013 America Invent Act, it is very important to file a provisional patent application to record your invention and get an early filing date. Even if you elect not to pursue the non-provisional patent application, provisional patent applications are never examined by the Patent Office and not published.(see America Invents Act FAQ’s).

Usually conducting a patent search first before any patent application is filed is usually the best course to follow if funds are available.  By doing a patent search and obtaining professional guidance from a patent attorney you can determine whether it makes sense to move forward and what patent rights could be possibly obtained.  In an ideal world,  everyone would start with a patent search, file a provisional patent application and then within 12 months file a non-provisional patent application.

Patent Searches:  How to Conduct a Preliminary Patent Search:

Remember to look at issued patents, pending patent applications and websites that disclose the invention.

Most inventors are interested in saving money.    Our following comments should not be interpreted that inventors can or should forgo a professional patent search.  There is simply no comparison between a patent search done by an inventor and a patent search done by a professional searcher.  Every inventor should search and looking if for no other reason than to familiarize themselves with the prior art. .

If you will do your own searching and find patents you will need to learn strategies, and also about the free tools that are available to you.  If you will do your own preliminary patent searching you will want to look at the United States Patent Office Full Text and Index Database. A lot of information can be found free, and the system is not difficult to use. There is also an excellent  Web Based Tutorial on the Patent Office website to educate inventors on how to use the online search features.

Another useful site is: Free Patents Online

 Google also offers Google Patent Search,

First conduct a Classification search to find the most relevant primary and secondary Class and subclass numbers. Record these numbers.

Develop a list of important keywords that describe the ‘inventive concept’ and the primary embodiment.

Conduct a keyword search using the Advance Search Page. Most patent search sites offer an  Advance Search page, (see USPTO Issued Patents Advance Search Page) that allow you to conduct a keyword search in the Title, Abstract, Specification and Claim fields. Multiple keywords can be search in each of these fields Also, keywords for different fields can be combined and search (ie. to search for LED illuminated dog collars use the follow command: ‘TTL/”dog collar” and TTL/LED and ABST/illuminat$’).  

Also, note that the U.S.P.T.O. is adopting a new Classification System. Therefore, you also need to be familiar with CPC classes. You may use “CPC/” and the classification number without the numbers in parenthesis.

When you identify patents or application, write down their patent numbers and publication numbers. We use a 5 star relevancy rating system to indicate the relevancy of the patent or application. We also draw diagrams using lines and arrows showing if a patent reference by a earlier patent or was later reference is a later issued patent. Eventually, you’ll see a pattern and have a feeling whether the invention is remarkable and worth pursuing.

NWPatents - Dean A. Craine, PS
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Bellevue, WA 98005
Phone: 425.637.3035
Fax: 425.637.9312

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