You’ve come up with an excellent idea for an invention. It’s original, at least as far as you know, but you don’t want to assume before you begin the patenting process. You can find out with a patent search.
What is a patent search? A patent search, aka novelty or patentability search, confirms whether an invention is new. If it isn’t, then you won’t be able to get a patent. If the novelty search does not uncover any relevant documents, then you may be able to get a patent. The patent search indicates a likelihood, not a guarantee that you will get a patent.
In this article, we will talk more about the novelty search, including its value and how to do it. We’ll also go over the differences between an informal and formal novelty search as well as searching limitations.
So, let’s get started.
What is a patent search?
The patent search answers a small part of the overall legal standard for getting a patent (i.e., can I get a patent on my invention?). The legal criteria for getting a patent are:
- The invention must be eligible for patent protection (i.e., it must be patentable subject matter).
- The invention must be novel.
- The invention must be non-obvious (i.e., it must be a significant advancement of existing technology).
- You must file a patent application with the U.S. Patent and Trademark Office (USPTO). The application must be examined to see if it meets the standards above, in addition to other legal standards.
A patent search will help a potential applicant to see if they can meet the second criterion mentioned above—that an invention must be novel. The searcher attempts to find patent documents that teach how to make and use the invention (i.e., that disclose the point of novelty).
The patent search is not good at telling you if your invention is obvious (criteria #3 above) in light of the search results.
Obviousness is too complicated (and often impossible) to know. Whether multiple, combined prior art documents would render the invention “obvious” is highly subjective and dependent upon the specific examiner assigned to a patent application. At best, the patent attorney’s opinion on obviousness is his or her best guess.
A patent search does a good job of finding prior art to find out if an invention is new or novel compared to existing technology (i.e., prior art).
Prior art includes secret and public information that existed before the filing date of the patent application. This information can be used to reject your application for a patent. For example, the idea of a basic wooden pencil is in the public domain.
Prior art also includes ‘secret’ prior art. Here is what I mean. After filing a patent application with the USPTO, the application is not open to the public. It remains secret for eighteen months. After this period, the Patent Office publishes the patent application as a pre-grant publication even if the patent application does not mature into a patent. The patent application is considered to be secret prior art during the 18 months.
Even though prior art is secret, it can be used to reject a later filed patent application. However, it must become public to do so. In other words, when the Patent Office publishes a patent application or patent, the patent is retroactively considered prior art as of its filing date. Unfortunately, a patent search will not find these secret references. They were not published when the searcher looked for them. Although it would be desirable to be able to uncover these hidden references, it is nonetheless a risk that one must accept and accept.
How to conduct a patent search?
The patent search typically involves searching the patent document databases at the USPTO and perhaps even foreign patent documents. On the USPTO website, the patents and the pre-grant publications are in separate databases. Thus, you need to search both databases if you attempt to conduct a patent search yourself.
The searchable portion of the USPTO databases only includes issued patents and applications published during a limited period. Issued patents are word-searchable only from the early 1970s onward, while published applications are word-searchable from the early 2000s when the publication of applications began. Full-text searching may be available on Google’s® patent database or at www.freepatentsonline.com. For those interested in doing an informal patent search, the Seven Step Patent Search Strategy, published on the www.USPTO.gov website, offers instructions.
As of 2017, there are over nine million issued U.S. patents and many pre-grant publications in the patent document databases at the USPTO. A patent search typically does not include databases outside of the USPTO. However, a patent search is still relatively reliable because of the large volume of information contained in the millions of patent documents at the USPTO.
What are the benefits of a patent search?
There are several reasons to conduct a patent search. First, the patent search may reveal prior art that includes an identical description of the point of novelty of the proposed invention. In this case, the patent search saves the inventor the cost of filing a patent application.
Moreover, this revelation may inspire the inventor to modify the current idea or pursue another invention. You would save on the costs of preparing and filing the patent application and patent prosecution. More importantly, you would save time, energy, and money that you would have wasted building and marketing the invention. The inventor can now divert this time, energy, and money to building and marketing a different invention.
Because the patent search provides insight into others’ inventive and problem-solving attempts (i.e., the state-of-the-art related to the invention), it can also help the inventor draft the patent application. The results of the patent search can also help you understand what to focus on to get a patent.
Informal vs. formal patent searches
When inventors conduct a simple patent search on their own, it’s typically a general, text-based search using an online search engine such as Google. However, such a search may produce a long list of results that include irrelevant references. For example, a search for the term “butterfly” will bring up results related to both a butterfly valve in a fluid system (as in a car, for example) and the insect called a butterfly.
It would be an inefficient use of time to sift through all the results to find all the relevant references. Of course, an inventor should always conduct a short, cursory, informal search before paying for a formal one. If the inventor finds something identical to the invention, then he or she can avoid wasting money on attorney fees to conduct a formal patent search.
If the informal search does not find anything relevant, the next step would be a formal search.
Why do you need to do a formal search if you did an informal one yourself?
You would have to do a formal patent search because the proper way to conduct a patent search is by doing a class/subclass search.[i] A formal patent search identifies the proper class and subclass combinations for the invention, which then produces more concise search results. A text-based search conducted using the proper classes and subclasses produces highly relevant search results compared to an informal search.
For this reason, a formal patent search gives inventors more reliable information. Inventors can make an informed decision on whether to file a patent application and spend time and money launching a product.
Does this mean that a formal patent search is reliable enough to guarantee a patent on the invention? No. A formal search cannot tell you if the patent office will grant you a patent.
Because a formal patent search cannot cover every prior art reference, the patent search cannot tell you whether you will get a patent. Also, the patent office categorizes the patent documents into about 450 different classes and 1000 subclasses. Some of the more relevant class/subclass combinations of the invention may be inadvertently overlooked or not searched.
In other cases, the patent office may have misclassified relevant references. Additionally, even if you were able to search every class/subclass, the most pertinent document might have used different terms. The search may miss these more relevant documents. Therefore, a formal patent search that uncovers no prior art references is not a guarantee. It does not guarantee that you will get a patent on your invention, as we’ve said.
If the patent search does not find a reference that discloses the point of novelty of the invention, then any opinion of patentability is merely a likelihood of success, not a guarantee.
Limitations of a formal patent search
Even if a formal patent search does not find any relevant prior art references, the examiner at the Patent Office can still reject the patent application. The patent examiner might think that the combination of references is obvious.
This situation happens because the initial claims in the patent application are designed to come close to, but not clearly avoid, the prior art. The patent attorney may strategically draft the claims rather broadly so that the patent examiner would reject the claims. The claims can always be narrowed afterward to avoid the prior art during the examination to secure the patent.
Let me explain: a strategy when representing solo inventors and small companies is to secure claims of medium breadth—not too narrow or too broad.
On the one hand, claims that are narrow are more likely to be granted a patent by the USPTO. However, narrow patent claims are easy to design around and so avoid patent infringement liability. If the claims are narrow, the claims if granted will not provide significant barriers to competitors introducing similar products into the marketplace.
On the other hand, broad patent claims are great for solo inventors and small companies, since they are difficult to design around. Broad patent claims create obstacles for others to compete with the inventor (i.e., an effective barrier to entry from competitors).
However, very broad patents are expensive because they require extensive argumentation, including back-and-forth communications with the USPTO. The back-and-forth communication with the examiner increases the time that an attorney spends on the case. Increased time means increased costs for the inventor.
When drafting the initial patent application, the right balance between broad and narrow claims is the goal. By doing so, a cost-effective strategy is achieved to secure a meaningful barrier to entry from competitors.
This strategy seeks allowance of a claim that is as close to the prior art as possible. If the examiner rejects the claims, the claims can be narrowed during the examination to avoid the prior art and to convince the examiner to issue the patent.
This strategy allows the attorney to narrow the claims only to the extent that it conflicts with the prior art cited by the examiner and negotiate the broadest possible claim coverage.
For this reason, the initial claims are likely to be rejected by the examiner by design. The patent search is, therefore, not indicative of whether the initial office action will be a rejection or an allowance. A positive opinion from a patent search primarily indicates the likelihood that the patent application may eventually mature into a patent. It does not mean that the original claims submitted with the patent application will be allowed in the first office action.
Patent search vs. clearance search
Inventors may feel that it is appropriate to address concerns about infringing on another unknown patent with their attorney when the topic of a patent search arises. However, patent and clearance searches should not be confused with each other because they are not directly related.
A patent search indicates the likelihood that an application for a patent may be allowed by the USPTO. In contrast, a “clearance search” helps determine the likelihood of infringement. If an invention is made, used, sold, or offered for sale in, or imported into, the United States, would such activities infringe on patent claims owned by others? Patentability and infringement are entirely different issues. These topics are not interchangeable.
A patent on an invention may be granted that infringes on another patent. The patent may be granted for the invention because it improves on an existing patented product or adds a feature to that prior product.
Clearance searches are significantly more expensive than prior art searches because they require more time to complete. These tasks include:
- sifting through many patent references,
- checking patent terms to see if patents of interest are still in force,
- looking at the scope of the patent claims,
- comparing the patent claims to the invention, and
- if needed, reviewing the prosecution history to construe the claims.
Clearance searches are frequently cost-prohibitive for most clients and are therefore often not conducted or not conducted in detail.
However, a scaled-down approach to addressing potential infringement may be more cost-effective. If you know a competitor’s product is patent-pending, buy the product and see if they marked the product with the patent number. Also, an assignee search can be conducted to find any relevant patents of the company. The assignee search is a search of the patent databases for any patents or patent application filings owned by a competitor. After you find the relevant patent documents, examine the claims of that patent(s) or pending application to determine infringement issues.
Side Note: I indicated that you should not discuss questions related to patentability when talking about infringement. Patentability and infringement are two separate topics. In general, this is true. However, if you thought that your invention was worthy of a patent, then the inventors of the patent documents found in the search may have also believed the same. If so, then you might want to review the patents in the search results for infringement.
As such, to address infringement concerns, it makes sense for an inventor to review the claims of the relevant prior art patent documents uncovered during the patent search. The patent search does not tell you whether you may make, sell, offer, or import the invention without infringement liabilities. However, the patent search does provide a small measure of assurance that making and marketing the invention does not infringe on another’s patent. Please be aware that such searches and reviews only minimally mitigate the possibility of patent infringement liability and do not eliminate it.
When to forgo a patent search
The patent search tells you whether you should file a patent application. The patent search is a go, no go gage on whether you should spend money on the patent search. However, the patent search also tells you whether you should start a business based on the invention, which is significantly more expensive than the cost for a patent application. If you are going to start your business regardless of the search results, then the benefit of the patent search is much lower.
The patent search is being used only to tell you whether to spend money on the patent application, which is a significantly smaller decision than to start a business.
If the inventor will launch the product regardless of the result of the patent search, it may be better to forgo the patent search entirely and use those funds for the patent application.
Here is the reasoning for that. The patent search is about one-third to one-fourth of the cost of a patent application and is likely significantly less than the cost to launch a business or product. If an inventor uses the patent search to decide whether to start the business and whether to file a patent application, the patent search would be beneficial. The patent search is used to tell the inventor whether spending a lot of money is wise.
However, if the patent search is used to let the inventor know whether to file the patent application only, the value of the patent search is low. It may be beneficial to forgo the patent search and redirect these funds toward preparing and filing the patent application.
Another reason to forgo a patent search is when the inventor has already invested a substantial amount of money. The inventor is committed to launching the product. The inventor may be better off if he or she redirects the funds to the patent application. Once again, in this scenario, the inventor is committed to launching the product, and forgoing the patent search and applying the funds to the patent application process may be a better use of limited funds.
File a patent application without a patent search
Patents have many purposes, including the primary function of protecting the revenue stream generated by future sales of the patented or patent-pending product or method. The decision to spend money and time to seek the patent should typically occur before the start of any sales or marketing.
Although you can file the patent application after the start of marketing, that is generally not recommended. If you do, your ability to a patent is in jeopardy. A third party could file a patent application before you. They will win the race to the patent office.
If you bypass the patent search, it may still be preferable to incur the cost to prepare and file the patent application. I can understand inventors desire to spend money only when there is a high likelihood of success. However, it may be worth preserving the option to seek patent later on in case the product does well in the marketplace. Otherwise, you won’t be able to seek patent protection later on after the product does well. If the inventor does not want to spend a lot of money, there are cost-saving strategies for securing a patent.
Side Note: If you want to preserve your option to seek a patent later on, you need to file a patent application. If the inventor files a patent application, and the product does not do well on the market, you can abandon the patent application. You would have lost money on the patent application. If the product does well on the market, the inventor can speed up the examination of the patent application to secure the patent faster. This strategy of preserve then expedite is a cost-effective strategy that has helped many of my clients work through this issue.
First, when you secure a patent, you will encounter two major costs. These costs are the cost to prepare and submit the patent application (i.e., patent preparation costs) and respond to office actions from the USPTO (i.e., patent examination costs). To lower costs associated with patent preparation, an inventor can file a “provisional application.” A provisional patent application costs less than a non-provisional application because it has fewer required sections. Moreover, a provisional patent application is not examined and remains pending for twelve months. Thus, you can defer patent examination costs to a later date. The benefit of filing a provisional patent application is the deferment of the patent examination costs for an additional 12 months.
If the product does well in the first twelve months, the inventor can speed up the examination process by filing a non-provisional application with a prioritized examination request before the 12 months is over. This request moves the patent application to the front of the queue, and the patent office will examine the application within six months. If the invention has not been successful in the marketplace, the inventor can abandon the provisional application and forego filing a corresponding non-provisional application. This will end the invention’s status of patent pendency. If the inventor does not know whether the invention will be successful, he or she can file the corresponding non-provisional application within twelve months. By doing so, the inventor maintains patent pendency on the invention.
You can file the non-provisional application with or without the prioritized examination request. If the patent application is not prioritized, then the patent office will examine the application in fourteen months to three years. During this time, the inventor can enjoy the benefits of patent pendency as well as delayed patent examination costs. As explained in the “purpose of a patent” section at the beginning of Section 1, the goal of a patent is to prevent others from introducing similar, competitive products. In sum, if the product is unique, it may still be worth the time and money for an inventor to file a patent application to preserve the option to secure a patent. If the product then does well in the marketplace, the inventor can more aggressively pursue patent protection.
[i] For an example of class and subclass categorizations, see Appendix B describing a patent I obtained for a client who invented a rear suspension for a mountain bicycle. This patent is categorized in class 280 which, refers to land vehicles, and subclass 284, which refers to rear suspensions.
<!–published on 3.10.18, link fixed on 7.7.19, rev on 8.13.19>