Should you conduct a patentability search before filing a patent?
I get this question all of the time and I always answer with the information I am providing below. However, by posting it in this blog, it may result in some really negative feedback from those that perform patentability searches for a living (assuming anyone actually reads this site which, in my own heart I am certain that thousands upon thousands do). If it offends, then great, prove me wrong.
You have no requirement to search
Please understand, there is no legal requirement to conduct a patentability search. The only legal requirement imposed upon applicants and attorneys is that if you KNOW of some prior art that would be material to the patentability, you must disclose it. You have no affirmative duty to go out looking for it.
It is a good business practice to search
Preparing, filing and prosecuting a patent application to issue, although cost beneficial, is not an insignificant cost. As such, it makes very good business sense to at least try to get the lay of the land with regards to prior art.
You test drive cars, try on shoes, date a potential spouse, and interview a potential employee. It is a great move to do all these things as well as to conduct a patentability search. In addition, the more related art you find and disclose to the United States Patent Office, the stronger the examination of your patent application will be. As a result, you will end up with a better, more valuable and more enforceable asset.
What is a patentability search?
A patentability search is an art. It is designed to identify any documents, patents, patent applications, publications, products, etc., that may beat your date of invention or, beat your filing date by more than a year (prior art). If such a monster exists, and it fully discloses all of the patentable aspects of your invention, you can’t get a patent (well, you can but it will be worthless and if you are deceptive in getting the patent and hiding the discovered art – you may end up in big trouble).
A patentability search is simply a process to search for and identify any prior art. It is also referred to as a prior art search.
It is an art because it is quite impossible to conduct a full search of all possible prior art. There could be publications in another language in another country that you may miss. Further, there may be pending patent applications that are not yet published to which you simply cannot gain access. And so, the art aspect arises by trying to conduct the widest and most accurate search without expending unreasonable resources.
What is the best way to conduct a patentability search?
This is where I may get in trouble. In general, there are two ways to conduct a patentability search: (a) do it yourself or (b) hire someone else to do it for you. Hiring the service out can be done in a variety of ways including hiring a professional search firm, requesting your patent attorney to conduct the search, or hiring a consultant.
Professional search firms. Every opportunity I get to question these professional search firms, I ask them the following question: what do you do and how much does it cost. The answers usually come out like this:
- we go to the patent office and talk with an examiner to help identify the class(es) that the invention would fall into
- we then search the patents/applications in the appropriate class(es) to find any that are material
- we then conduct a key-word search for other patents
- some even say they do an internet search for other documents
- package the information up with a summary letter and send out
This is all done for a cost of $500-1000. I always say to my self – right. The reason is that I simply don’t think that a company can do all the work that is necessary for a patentability search – and especially all the work that they describe they do – for that cost and still be a viable, profitable company. As such, I think that what they actually do is the following:
Maybe talk to an examiner
scan the titles of patents that are in the related class
maybe scan the title of patents that pop up in a key word search
pull a few related patents and send it out in their report
Patent attorney searches. Well, first of all, I would be more than happy to provide what I described above as what I believe search firms actually do, for the $1000 price. But, as always, I would advise you to not use my services for this. It is a waste of your money and you can certainly spend it much more wisely.
Consultants. This search option is the only one that I would really recommend if you are very serious about conducting a patentability search and you don’t want to do it on your own. The approach is more expensive but, you can get a decent search out of it. One of my favorite guys to use is Greg Aharonian because, not only is he a character but he conducts a very thorough, heartfelt search. You can check out his website at http://www.bustpatents.com.
Doing it on your own. I generally push this final option quite hard with clients – both corporate and individual. For corporations, the reason I push it is that you have a captive group of consultants right there in house. Especially if you have an incentive program, you can make the patentability search a requirement for receiving the incentive reward. Further, my opinion has always been that if your engineers or R&D group is on the cutting edge, they are out there and aware of what your competitors are doing. For individuals, I simply explain that they are financially more motivated to conduct a thorough search than a search firm would be.
In both cases, I explain that the tools available are quite sufficient to conduct the task on your own. The United States Patent Office has a great search engine for searching issued patents and published pending applications available at www.uspto.gov. In addition, Google has an awesome search engine available at http://www.google.com/patents?hl=en. Do key word searches for the patents. Look so see how the relevant patents are classified and then do class searches with broader search terms or no search terms if the class is not too crowded. You can also find international applications at www.wipo.int. Finally, keep records for everything that you do find and make sure you provide it to your attorney for filing with the patent application.
