Patents are one of the most valuable intangible assets of intellectual property. During prosecution of the application at the patent office and subsequent litigation, the patent is subject to a multitude of tests including novelty and non-obviousness over the prior art, among others. As a patent attorney, with the knowledge of the closest prior art, I can draft a more defensible patent application based on the patent search, and that will help strengthen the resulting patent in litigation.
As securing the broadest coverage for your intellectual property is paramount, you need to be aware of the ins and out of the process from the beginning and that why conducting a patent search for relevant prior art is recommended. This will not only save you time and money, but it will also help you avoid errors that could cause you to lose your invention hence the reason we recommend conducting a patent search.
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What’s a Patent Search?
A patent search is used to determine whether an invention is patentable. A patent search can make the difference between a profitable and wasteful investment in the commercialization or patent of an invention.
If you do not search for a patent before proceeding, it can be costly to invest time, money, and energy in the process, only to lose a patent or get litigation for infringing by someone else.
The patent search’s goal is to inform the inventor about patentability. The results from the patent search answer the bigger question of patentability.
Patentability is when an invention is eligible and has both novelty and non-obviousness. This means the invention is accepted as subject matter (eligibility), unique in the world (novelty), has not been published/patents suggesting that it could be done, and if practicing an invention could infringe an existing Patent.
Key Things To Look Out For When Conducting A Patent Search
Before beginning the patent application process, it is crucial that you do a patent search to make sure you are dealing with an original idea. In order to get conclusive results, you need to keep the following in mind:
#1. Understand the process
Most people tend to confuse a patent search with prior art searching. A patent search simply refers to looking for patent documents that could have an implication for your invention.
However, prior art searching extends to non-patent documents and is a requirement when filing for a patent. In order to do a comprehensive patent search, you can consult a patent search professional or the USPTO patent guide.
#2. Outline your goal
Before you begin conducting your patent search, it is important to outline what you plan to achieve. When you are through with the patent search, you should be able to determine the patentability of your invention.
Basically, you should be able to tell whether your invention is one of a kind and can pass the patenting examination successfully. If you come across any conflict of interest, an IP attorney should be able to help you.
#3. Seek professional help
There are tools online that can aid you to conduct your own patent search. However, if it is your first time doing this, you may feel overwhelmed and might not be as thorough.
If you conduct your preliminary search and find favorable results, you can contact a patent attorney to not only confirm your results but also help you through the patent filing process.
Why You need to conduct a Patent Search
Patents provide legal protection that protects your inventions from use or monetization without your permission. A patent search is one way to prevent patent infringement. A patent search has many benefits beyond the obvious. They include:
Benefits #1: Avoid making costly investments
Understanding the patentability of your invention will help you make better decisions and avoid making unnecessary investments. You can save time and money by not investing in an invention already patented and avoid the costly and lengthy patent application process.
Benefit #2: Get familiar with relevant prior art
Understanding the prior art will help you understand its patentability and make writing unique claims and descriptions easier. Certainly, if there are already similar inventions, you can save money by stopping developing the invention.
Benefit #3: Enhance your patent application and design
Learn from other patents to improve or create a new invention. Innovators can gain knowledge and benefit from this knowledge when they are able to improve their patent applications or create improvements over prior designs.
Types Of Patent Searches
A comprehensive patent search is a great way for your company to gain insight that will help you stand out in the market. As your inventions or organization progresses through the innovation process, you will need to conduct different patent searches. Although many patent searches look the same, they may have different purposes.
Type #1: Search for novelty or patentability
The Novelty Search is the most popular search. This type of search and opinion determines the likelihood of obtaining a patent. This is about whether the invention can be patentable according to WIPO.
Innovators and startups often request a novelty search to determine if their invention is patentable. This search can also provide valuable information to inventors such as the names of competitors in the same field.
What are the steps for a Novelty Search? First, the inventor must clearly identify their invention. Next, the inventor must clearly identify the invention. Next, the inventor must list and identify all key aspects.
Type #2: Freedom to Operate Search
A Freedom to Operate search, also known as a Clearance, determines whether product marketing is feasible in the light of in-force Patents. FTO searches will help determine if the inventor is allowed to use and commercialize his invention.
FTO opinions and searches focus on the claim sections of in-force patents, rather than the disclosures of prior art or novelty. It is can be more complicated, take longer, and cost thousands of dollars. FTO searches can also confirm that the invention isn’t infringing on any patents.
Type #3: non-infringement Opinion
An FTO search-like non-infringement opinion determines whether an inventor’s invention infringes any patent. Non-infringement opinions cannot be directed at specific patents or patents that have already been identified.
Non-infringement opinions follow the same steps as FTO searches, except that the patent in question is already identified. The independent patent claims, just like the FTO opinion must be deconstructed and analyzed.
Before any lawsuit is filed or allegation, it is crucial to obtain FTO and non-infringement opinions. A licensed patent attorney can conduct the search and provide an opinion (preferably written) that may be used to exonerate the inventor if he is sued for patent infringement.
Type #4: Validity Search
Validity searches are possible in certain situations. These searches are often requested by potential defendants and defendants in patent infringement lawsuits. They seek to invalidate patentees’ patents in order to defend against patent violations. This determines whether the patent sought is valid and enforceable.
In other cases, a validity search and opinion also determines the strength of patents before purchasing them or licensing them. The purchase or licensing of a patent can be canceled if it is invalidated, unavailable, or otherwise not acceptable. A valid opinion is also useful to assess the IP portfolio of target businesses before any merger or acquisition.
To conduct a patent search, you may access
A prior art search is a search for existing patents, published patent applications, and other publicly available information that could impact the patentability of an invention. Here are some tools that are commonly used in conducting a prior art search:
- Patents and Published Patent Applications: The USPTO’s database of patents and published patent applications is a valuable resource for finding prior art. You can search for patents and published patent applications by keyword, inventor, assignee, and other criteria.
- Google Patents: Google Patents is a search engine that allows you to search for patents and published patent applications from around the world. It has a large database of patents and it also allows you to search for prior art using natural language queries.
- The European Patent Office (EPO) and the World Intellectual Property Organization (WIPO) databases: The EPO and WIPO both maintain databases of patents and published patent applications that can be searched for prior art.
- Technical libraries: Many universities, government agencies, and private companies maintain technical libraries that can be searched for prior art. These libraries often have access to a wide variety of technical publications, such as journals, conference proceedings, and technical reports.
- Non-patent literature: There are many sources of non-patent literature (NPL) that can be searched for prior art, including scientific journals, trade publications, and technical reports. Some examples include JSTOR, IEEE Xplore, and Science Direct
- Prior Art Finder: Prior Art Finder is an AI-based tool that uses machine learning algorithms to search through millions of patents, scientific papers, and other sources of prior art.
Online databases: The USPTO has made online searching of its databases available to the public at no charge at http://www.uspto.gov. Other free online search options include CASSIS (a CDROM-based search engine), Delphion Research Intellectual Property Network (previously IBM patent site), and Source Translation and Optimization (STO), an Internet Patent Search System. You can also use commercial patent search tools such as Google Patents, PatSnap, and others to search for provisional patent applications.
It’s worth noting that, unlike issued patents, provisional patent applications are not published 18 months after the filing date. Therefore, it’s harder to access the full content of the application. However, you can still find some basic information such as the title, inventors, assignee, and application number, which can help you locate related applications or patent families.
The USPTO’s Crystal City Public Search Room: Your local patent library describes and lists the US Patent and Trademark Depository Library Program. Please note that not all patent depository libraries have a complete record from the USPTO.
It is important to note that a prior art search is not a guarantee that the invention is new and non-obvious, and it is always recommended to conduct a professional prior art search by a patent attorney or agent.
Strategy To Conduct a Patent Search
To identify any prior art (e.g. patents or applications), that may impact your invention’s patentability, it is a good idea to do a patent search. The search process can be complicated and time-consuming in some cases.
We recommend that you work with a skilled attorney in patent law. These are the steps to take when conducting a patentability search.
Step #1:Keyword brainstorming
You can begin your patent search by choosing a relevant keyword if your patent search tool has advanced search features such as semantic search. These search features will help you to identify your search intent and deliver the best results.
Step #2: find the correct CPC classification
Once you have identified the Cooperative Patent Classification(CPC), that is most relevant to your invention you can start searching for similar patent documents. CPC is a patent classification method of organizing all patent documents into specific technology groups based on the same subject matter.
Step #3: Search both published patent applications and issued patents
To conduct a US Patent Search with the USPTO, you will need to search both the Complete Patent Documents Database as well as the Published Patent Applications Database.
This will enable you to locate the closest patent documents to your invention. Other online tools will allow you to search for relevant patent applications or issued patents. Advanced filters make it easier to find more precise results.
Step #4: use the citations from the prior art of patents
Once you have identified similar patent applications and issued patents, you can then expand your search by looking at the forward and backward references.
The citations and prior art layer-by-layer will give you the best results. Many search engines online offer search options that cut down on the time it takes to go through each layer of citations. These tools and algorithms may also prove to be more user-friendly and efficient than traditional patent search methods.
Step #5: repeat the process to expand your search radius and dig deeper.
It is important to search for non-US patents as well as non-patent literature from other authoritative patent offices in order to broaden your search. You can also look into a patent to learn more about its family.
Patent search Cost
A patent search can cost anywhere from $100 to $3,000 depending on the complexity of your invention.
Professional Search Fees
Professional patent researchers may charge a variety of fees. This hourly fee can be used if you require a professional patent researcher to review your information and provide an opinion on Patentability. Fees vary depending on what type of invention is researched and who is doing the research.
If the service does not provide analysis or an opinion, you might pay only $100 for a simple invention. For more complex inventions, which require more research, you may pay $2,000 instead. Here are some examples of how much you might pay to hire an attorney.
- Simple inventions: $1,000 to $1250
- For more complicated inventions, the price range is $1,250 to $ 1,500
- For simple inventions, the price range is $1,500 to $2,000
- It costs between $2,000 and $3,000 for highly complex inventions or software
Government Search Fees
The Patent Examiner assigned for your case will conduct a search on your patent after you have submitted your application. For small entities, such as universities or small businesses, the fee for the search is $300. The fee for larger businesses is $600. This fee is bundled into your filing fee and is required as part of filing your patent application. For more information on government search fees, visit the USPTO website.
Now over to you
Conducting a prior art search before filing a patent application can improve the quality of the patent in several ways:
- Increases the chances of getting a patent granted: A prior art search can help identify existing patents and published patent applications that may be relevant to the invention, which can help to determine the patentability of the invention. By identifying and addressing any potential prior art issues before filing, the applicant can increase the chances of getting a patent granted.
- Improves the scope and clarity of the claims: A prior art search can help to identify the specific features of the invention that are novel and non-obvious, which can help to improve the scope and clarity of the claims in the patent application.
- Increases the value of the patent: A thorough prior art search can help to identify potential competitors and other potential threats to the patent, which can help the applicant to make strategic decisions about how to protect and monetize the patent.
- Enhances the quality of the patent: A prior art search can help to identify any potential errors or inconsistencies in the patent application, which can help to improve the overall quality of the patent.
- Avoids legal issues: Conducting a prior art search can help to identify any existing patents that may be infringed by the invention, which can help to avoid legal issues and potential infringement lawsuits.
Now go get your patent exclusivity for your Unicorn idea!