Professor Demchick's Blackboard
Dr. Demchick has been a college and university faculty member for many years. On these Blackboard Pages he does a little teaching. These pages are intended as general, introductory information. Compromises were made between including details in these pages and keeping the pages readable for a general audience. These pages are not intended as legal or other professional advice.
PATENTABILITY SEARCHESPrior to the actual preparation of a patent application, patent practitioners (patent agents and patent attorneys) typically perform (or have someone else perform) a patentability search (which is one type of "patent search"; ") and then give the client a patentability opinion. It is important for someone contemplating seeking patent protection to understand the values and limitations of such searches.
One value of a patentability search is to have the information to give a meaningful patentability opinion. A patentability opinion is a professional opinion about the likelihood that the invention could receive patent protection. The patentability opinion should also include considerations about the likely scope of a patent that could be obtained. The information in the patentability opinion can be used by the client so that the client can decide whether it is worth proceeding with the preparation, filing and prosecution of a patent application.
The patentability search also supplies information that allows the drafting of a stronger patent application. For example, one wants to emphasize what about the invention is new. One cannot do that unless one knows what has already been done.
The ideal patentability search would reveal all relevant "prior art." It should not only include all relevant United States patents; it should include all relevant patents from any country on earth. It should also include other information relevant to patentability. That includes (among other things):
Sales anywhere in the United States of anything similar to the invention. Publications anywhere in the world which disclose anything similar to the invention. Information about public use of anything like the invention anywhere in the United States. No patentability search is ideal. Publications include more than "big name" publications. Club newsletters can count as publications. A single sale, by some little store across the country, is relevant to patentability. No patentability search can include every publication or assure that no sale has occurred. Even patents themselves are difficult to search. In the United States, almost 7 million patents have been issued. The patents (or at least summaries) from many countries are available on-line. However, that is not true for all countries. Not all patents are in English. It is important to have a good sense of how complete a patentability search you are having done. It is also important to realize that even the best patentability search may have missed something important.
No patentability opinion is perfect. The opinion is based on the prior art that was found during the patentability search. If relevant prior art was missed, the opinion will not properly account for that important information. Also, a professional patentability opinion is just that, a professional opinion. While that is far different than a plain guess, it can never be a certainty. After all, I do not use a crystal ball; I use carefully researched information and professional judgment. I could never promise a client that a particular invention is patentable. In addition to any lurking prior art missed during the search, there is a degree of human judgment exercised by the patent examiners (the professionals at the United States Patent and Trademark Office that make decisions about patentability). Although those examiners follow rules, those rules are somewhat subjective. The patent practitioner may view the relationship between prior art and a new invention differently than a given examiner on a given day will. No person can properly promise you a patent in advance.
While all patentability searches are imperfect (since none can assure that nothing was missed), not all patent searches are equal. The quality of a patentability search will depend on:
The invention for which the search is being conducted The skill of the searcher The materials being searched The time spent on the search Before requesting a search, it is important to know the credentials of the searcher. For example, is the searcher a registered patent agent or just someone who decided to hang out a "patent searcher" shingle?
Before requesting a search, it is important to be clear about the sort of materials that will be searched. What is the best assortment of materials to use? It depends on what subject matter is being searched. It may seem like more types of materials searched would be better. However, given that a finite time will be spent on any search, it is better to search the types of materials likely to be relevant. Common search materials include:
Issued United States patents Patents of countries other than the United States Published patent applications Catalogs Technical journals Magazines Books Web resources Patentability opinions vary considerably. Some are essentially boilerplate letters that say that references that "may be relevant to patentability" are attached. Invention promotion companies are infamous for supplying low quality searches and no opinion (or that sort of useless form letter type "opinion"). It is important that you and the searcher have an understanding about the type of report you will receive.
What is the right time to spend on a search? For any given searcher, more time can produce a better search. A fifty hour search is less likely to miss something relevant than a five hour search is. However, more time is more expensive. If an applicant is planning to incur major expenses (e.g., building a factory to manufacture the invention) while the patent is pending, it is probably worth doing a really, really thorough search. However, for most independent inventors, the worst case if they don’t get the patent is that they will have sacrificed the costs of trying to get the patent. In those cases, it usually makes little sense to spend nearly as much on the search as the cost of preparing, filing and prosecuting the patent.
In my practice, I do not use a "one size fits all" search approach. I discuss the specific needs and preferences with each client or prospective client. The search always includes United States patents, the patents of many other countries and published patent applications. Which other materials are searched depends on the nature of the invention. I discuss this with each person contemplating a search. Sometimes a client knows the field of the invention well enough to suggest materials I should search. The engagement letter always spells out which materials will be searched. The time spent depends on the needs and preferences of the client. Typically, I spend five to ten hours on a search. However, that varies. Sometimes before preparing a provisional patent application, a client opts to have a more cursory search done.
There are various kinds of patent searches other than patentability searches. For example, one type of patent search is the validity search. Validity searches are done to determine whether prior art exists that could render an issued patent invalid. Validity searches are often done because of current or anticipated litigation. Another example of a type of patent search is the Freedom-to-Operate search which is done to determine whether a particular practice or product (currently in existence or potential) does or would infringe any in-force patent. I do not do either of those types of patent searches. The only type of patent search I perform is the patentability search.