A patent search involves reviewing prior art (i.e., existing technology) to evaluate the likelihood that the United States Patent and Trademark Office (USPTO) will grant a patent for your invention.
Benefits of a Patent Search
Conducting a patent search offers several advantages. Inventors and businesses can use the results to decide whether to continue investing time and resources into developing the invention. Expenses such as molds, marketing materials, and investor pitches can be avoided if the search reveals prior art that matches your idea, rendering it unpatentable.
Additionally, search results are valuable when drafting the patent application. Focusing on aspects of the invention not found in the search can improve the chances of obtaining patent protection. The prior art references may also provide useful information for the background section of the application.
Reviewing the claims in the prior art patents can also help identify potential infringement issues, although this is not the same as a clearance search, which is more comprehensive and costly. The goal is to ensure that while a prior document may disclose one or more features of your invention, it hasn’t claimed those features in a way that would block your patent.
Patentability Opinion
A formal patentability opinion from a patent attorney involves two steps. First, the patent search itself, which can be done by either the inventor or a search firm. Search firms provide raw search results (i.e., a list of relevant patent documents) but do not offer legal opinions.
The second step is the review and opinion phase, where the patent attorney assesses the prior art and provides their opinion on the likelihood of obtaining a patent. If the invention appears to have limited merit or uniqueness, the attorney will advise accordingly. If the invention stands a good chance, this will also be communicated.
Sources for Prior Art
Patent searches typically involve the USPTO’s issued patents and published patent applications. Foreign databases and trade publications may also be searched, particularly for cutting-edge technologies. When there is a smaller body of patent data, additional resources like trade journals and libraries might be included.
No Guarantee
It’s important to understand that a patent search opinion is not a guarantee of success but rather a professional assessment of your chances. Therefore, it’s crucial to work with an attorney you trust to guide you through this process.
Other related blog posts:
1. Overview: How to conduct a DIY patent search
2. Basics of a DIY Patent Search
3. Brainstorming keywords for the DIY patent search
4. Finding the right class and subclass for the DIY patent search
5. Search databases for both the issued patents and published patent application for your DIY patent search
I invite you to contact me with your patent questions at (949) 433-0900 or [email protected]. Please feel free to forward this article to your friends. As an Orange County Patent Attorney, I serve Orange County, Irvine, Los Angeles, San Diego and surrounding cities.