Most patent attorneys recommend a patent search before filing a patent application. During a search, a patent agent or attorney reviews the prior art – inventions that people have previously made in a particular field – and compares these finds against the features and structures of your invention. This comparison process helps to provide the inventor with a subjective opinion about whether an invention is eligible for broad patent protection, narrow patent protection, or no protection at all.
All too often, however, inventors perform their own search. Either they miss relevant prior art, or they find a similar reference and believe they cannot get a patent because someone else has patented something similar. Other inventors are reluctant to even begin to look, and so forego the patent search. Each of these can be mistakes.
Should I take a look at other inventions?
Absolutely! A quick search on your own is a good move. You may even develop new ideas from looking at other people’s efforts to solve the same problem that your invention addresses. Starting is as easy as typing in a basic google or google images search. You can also use patents.google.com to review US patents and applications. In some fields, you can start by searching technical journal databases like pubmed.gov. If you can find it, it is prior art – even if it was never patented, and even if the patent has expired.
Don’t be discouraged if you discover very similar inventions, however. Even small differences in construction, materials, features, or shapes can lend patentable weight to an invention. For example, did you know that the US Patent Office has issued dozens of patents for the paperclip? Each of these images was taken from a different granted patent. Some of the inventors, however, had to craft their patents very carefully, or patent just the method of making a paperclip. A patent search will help to determine if your invention needs similar treatment.
What is the cost of a professional patent search?
You should usually expect to pay a minimum of $900 for most patentability searches, depending on scope. The price of a patent search varies with the field and detail of the invention, the breadth of the search, and whether the search is being done in house or by a professional searching firm.
Each factor can make a big difference in price: searching just US-issued patents and applications, for example, is much cheaper than searching technical journals and foreign inventions in other languages. Professional searching firms are often staffed by previous patent examiners from the USPTO, which typically increases the cost of a search. Very complex engineering or biochemical fields may also be more costly to search.
What if no one is doing anything like my invention? Can I easily get a patent? Can I go sell my invention?
Highly unique inventions are usually easier to patent. However, you need to be aware that an inventor may elect not to publish his or her patent application – therefore, patent applications which have been filed but not yet published may not be available for even a professional search. Such additional patents or references could, if they arise, prevent you from obtaining a patent. Patent searching is also somewhat subjective and there is always a possibility that some relevant prior art might be missed due to classification or the terminology used in the application.
Finally, patent searchers will not usually review the claims of any patents they discover to determine whether or not the sale, offer of sale, or use of your invention will infringe. Therefore, unless it explicitly states otherwise, a patent search is not a legal opinion regarding your ability to make, use, and sell your own invention. For example, you may build and patent a toaster using circuits, but if the circuits are themselves patented, you may need to negotiate royalties if you want to sell your toasters.
What are the benefits of a professional search?
Professional searchers can quickly search technical journals and other material, and they also look for prior art by patent classification number. The patent examiner who reviews your application and determines whether a patent should be granted will use this classification system. Thus, searching the classification system gives you a useful advance look at what the patent examiner might discover. This can help you describe the key elements of your invention to better craft your patent application and avoid material that is already in the public domain. Getting a glimpse of the road ahead usually saves you money and time in the long run.
On occasion, a professional search will turn up a prior patent or invention that is exactly like yours in every detail. At this juncture, a good patent attorney can discuss your invention, provide objective insight, and may be able to help find ways to improve your invention and make it patentable. If the available patent protection is too narrow to be commercially useful to you, it is better to discover this at the search phase, rather than after you have already spent many thousands of dollars. For these reasons, a patent search is usually recommended.
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