Patent Search- What is A Search and Why it Makes Sense to Perform One
In the context of obtaining a patent, a “search” is a professional search of various online databases for inventions that are similar to your invention. The name of such searches varies within our industry, but at our office we simply call such searches a “Patent Search,” and is also often called a novelty search. Patent attorneys do conduct various other types of searches and render resulting opinions, such as: Freedom to Operate Opinions, Infringement or Non-Infringement Opinions, and Validity / Non-Validity Opinions. Thus, make sure the type of search and resulting opinion is appropriate to your goal.
Having the results of a proper search is a critical prerequisite for us to properly prepare and file a strong patent application. This is so, because once a patent application is filed the United States Patent and Trademark Office (USPTO), an examiner is assigned to the file and will conduct their own search for related inventions. That examiner will use the results of their search to find reasons why your patent application should be denied (e.g. a lack of novelty or the invention is obvious). Thus, in order for us to draft your patent application with an increased likelihood of avoiding such foreseeable problems, we conduct our own search first, before we file the application, so we can anticipate what the examiner’s likely grounds for rejections might be.
In other words, with no search or a less than thorough one, a patent applicant is merely gambling with whether their patent application will be allowed because they have no idea what the USPTO examiner will turn up and what type of objections and rejections the examiner will come up with. Thus, the costs of preparing and filing the patent application can be for naught.
Alternatively, a good search will turn up relevant references (prior art) that should allow your patent attorney to draft your patent application claims in a way to avoid the prior art and make your application more likely to be allowed.
The typical cost of a Patent Search ranges from $1,000 to $2,000, with some costing more and some less. Thus, inevitably, when the subject of ordering a Patent Search is first discussed with a patent applicant, the applicant states they have already conducted their own search and do not want to have to pay that added cost.
The problem is, most searches conducted by the applicant are not thorough enough. For example, under the current patent act (the America Invents Act), even foreign patents in foreign languages can be prior art and grounds for rejecting an inventor’s patent claims (see 35 USC 102(a)). And most patent applicants have made no search of foreign patent databases; rather, at best only a cursory search of the USPTO patent database has been made. The America Invents Act has expanded what can be prior art and generally includes anything that was published, whether it is published online or in hard-copy format.
In comparison, a professional search will generally search more applicable databases (e.g.: domestic and foreign patent databases, including published patent applications; university databases) than the applicant and will often use more advanced search strings, using logic based terms and connectors, and focus searches by proper classifications. Thus, the professional search is more useful in preparing any subsequent patent applications.
Eric Kelly
USPTO Registration No. 70,302
Patent Agent at
JAFARI LAW GROUP®, INC.