A patent search is a review of the prior art (i.e., exiting technology) to determine the likelihood that the United States Patent and Trademark Office would grant a patent on your invention.
There are numerous benefits to a patent search. Inventors and business may rely on the opinion to decide whether to invest additional time and money to develop the idea. Molds, preparation of marketing materials and pitching the idea to investors all take time and money that could be avoided if the patent search uncovers prior art identical to your idea. Hence, your idea would be unpatentable.
The search results may also used in drafting the patent application. The patent application may focus on those areas not found by the patent search in hopes of increasing the chances of obtaining patent protection. Moreover, the prior art references uncovered by the patent search may be used to describe the background section of the patent application.
The claims of the uncovered prior art patent documents may be reviewed to determine whether there are any infringement problems, at least with those references found by the patent search. This should not be confused with a clearance search which covers a broader range of patents and is significantly more expensive. The idea in reviewing the claims of the prior art patent documents is that since these documents may have disclosed one or more features of the invention, these patent documents could have also patented or claimed these features.
A formal patentability opinion produced by a patent attorney is a two step process. The first step is the search itself. This is what is covered in the links below for a DIY Patent Search. In this step, a searcher or you if you are doing-it-yourself (DIY) is attempting to find prior art references related to your invention. Oftentimes, patent attorneys will utilize the services of an outside search firm to reduce costs. Search firms do not render legal opinions as to patentability. They just produce the raw data or search results (i.e., a list of patent references).
The second step is the review and opinion step. This is the value added by the patent attorney. Based on the patent attorney’s experience, an opinion is formed after a review of the prior art references uncovered as to patentability. In close cases, the patent attorney will inform the client whether the invention is a thin invention – invention without much merit / uniqueness or something with a good chance of success.
Prior Art Databases
The databases searched are the issued patents database and the published patent applications at the United States Patent and Trademark Office. Other foreign databases and trade magazines may also be searched. For cutting edge technology or inventions which do not have a large data set at the Patent Office, the search may be expanded to include other sources such as trade journals, libraries, and the patent databases of other countries.
The opinion of the patent search is not a guarantee but merely an opinion of counsel as to the likelihood of whether the United States Patent and Trademark Office will grant a patent on the invention. As such, it is important to retain an attorney that you trust.
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.