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What to look for in a patent search Inventor activities preventing patentability Consult with a patent lawyer or agent Although patent law does not require a patent applicant to perform a search to determine patentability, a search may save him or her time, money, and disappointment. If a search is performed, it is important to keep track of the references found since an inventor is legally required to submit to the patent office anything that he feels affects the patentability of his invention. It may also be a good idea to show these references to a patent attorney. There are a number of law firms and other companies which offer patent search services. An outside search will usually cost at least a couple hundred dollars. For a small business or an independent inventor this may sound expensive, especially if an inventor is still “just thinking” about filing a patent application and is not sure how serious he or she is about getting a patent yet. The good news is that there are many resources to help the public perform on-line patent searches. A patent search should not be restricted to just patent references and should include an internet search and maybe even a trip to the library. What to look for in a patent search A search should be focused on finding references that either anticipate the technology or suggest that the technology is obvious. Anticipation means that a single reference discloses every element of your claimed invention. Obviousness means there are two or more references that, when combined, disclose every element of the invention, and that one of ordinary skill in that technical field would expect a reasonable amount of success if they were combined. An inventor should keep in mind that there are a lot of factors that help determine patentability and he or she ought to show the results of the search to a patent attorney or patent agent before discarding the invention as not patentable. The U.S. Patent Office Database (www.uspto.gov) is a searchable database of all U.S. Patents and Patent Publications. Other websites such as www.freepatentsonline.com also offer searchable databases of U.S. Patents, which some individuals may prefer over the U.S. Patent Office database. Regardless of where the search begins, it should be kept in mind that not all of the patents pending in the U.S. Patent Office have been published (meaning that they are not searchable). Typically, after a patent application has been filed in the U.S. Patent Office, the application will publish 18 months from the patent application’s filing date. This serves the purpose of notifying the public of pending patents that may soon become granted. Inventors do have the option to pay a fee to either extend the period before publication or to shorten it depending on their individual needs, but most often inventors opt not to pay another fee and allow their patent applications to publish on the 18 month anniversary of their filing date. When a patent application is filed, there is no way for an inventor to know if there is a non-published pending patent application in the patent office which discloses his idea. Since there is really no way of knowing for sure if an idea is really patentable, inventors have to take the risk and file for a patent without knowing for sure if their idea is patentable. When searching the Patent Office database (www.uspto.gov), there are a few tricks that may help a novice find more relevant references. The first thing to remember is that patent applications and granted patents have to be searched separately. When searching through the granted patents you must select for the search to extend back to 1790 (which goes back to the beginning of the U.S. patent office). The patent office only has images of the patents granted before 1976. Patents filed after 1976 have an image and a searchable text. Thus, it is possible to perform a word search on patents granted after 1976, while it is not currently possible to do so with patents filed prior to that date on this database. Another helpful hint is to search patents by class. When a patent application is filed, the patent office will decide which type of technology the idea falls under. Each class is divided into many subclasses. This may help find granted patents that are closely related to each other even though the terminology used in the patents is different. Consequently, patent examiners tend to search classes when examining the applications. Another useful trick when searching through granted patents is to look up the cited references on the first page of the patent of interest. These references were either cited by the patent office or those who submitted the patent application and were considered relevant to the claimed invention. Also, to search for the references that cited the patent of interest, “ref/(the number of the similar reference)” may be entered into the search field. A good website that provides a database of searchable patent references for U.S. and foreign patents is http://www.delphion.com. Foreign patent offices also have online databases. Follow the links to search the databases for Canada (http://patents1.ic.gc.ca/intro-e.html), Europe (http://www.european-patent-office.org), the United Kingdom (http://www.patent.gov.uk), or Australia (http://www.ipaustralia.gov.au). A foreign patent will also often be filed in the United States since the United States has had such a strong economy compared to many other countries and is where people spend the most money. However, there are definitely patents filed all around the world that are not filed in the United States. Different patent laws for each country add complexity to the global patent community and for inventors looking to have an international market. An internet search and a trip to the library will help find both patent references and non-patent references. Catalogs, advertisements, websites, magazines, scholarly papers, and journals can all disclose information which could prevent someone from obtaining a patent. Inventor activities preventing patentability According to U.S. patent law, a patent will not be granted on any idea that was made and sold or offered for sale over one year before the filing date of the application. Likewise, a publication by the inventor one year before filing a patent application will also bar the application from becoming a patent. Notice that these are activities that the inventor does himself that would disqualify him from obtaining a patent. Consult with a patent lawyer or agent It is strongly advised that search results be reviewed by a qualified patent attorney or patent agent before filing a patent application. An inventor is allowed to represent himself before the patent office and may write and file the application without the help of a patent professional. However, there are many factors that help determine patentability and an inexperienced patent drafter may overlook factors that a professional would not. |
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