People new to filing patent applications often have basic questions about patent searches. Should an inventor conduct a patent search? Is a patent search required? Does it matter when a patent search is done? What happens when nothing is found? What should be done when the inventor discovers that the invention is not patentable?

Patent searches are optional. In the US, there is no requirement that an inventor conduct a patentability search before filing a patent application. Some novice inventors are confused by the requirement that, IF a search is conducted and the relevant prior art is discovered, that the relevant prior art must normally be disclosed to the patent examiner or the inventor may be charged with fraud. Note that a prior art search is still not required, only the known relevant prior art required to be passed on, from an optional search.

Some inventors take the position that they don’t want a search, so they discover bad news. If they don’t discover bad news, nothing is withheld from the patent office, as the inventor never had bad news to disclose. Also, waiting for the patent search results and then making the necessary changes to the invention can delay the race to the patent office. Certainly when the U.S. Patent Office switches to a first-to-file system in March 2013, immediate filing of patent applications will be more important.

However, the patent office conducts its own patentability searches. Then, at some point, the inventor may discover the bad news that the state of the art prohibits obtaining a patent. By the time the patent examiner relays the bad news, the inventor has spent a considerable amount preparing and filing the patent application, waited several years for the examiner’s first notice, and invested funds in the manufacture and marketing of the invention. with an expectation of exclusivity. The moment the inventor learns that no patent will be issued, the original patent application is issued, instructing the inventor’s competitors how to make and use the invention. Once the competitor discovers that no patents will be issued, they can exploit the technology with impunity without paying a penny.

Certainly, an inventor should view the search for patentability as something akin to having a mechanic review a used car before purchasing it. While the mechanic will not guarantee that the car will not break down, they will surely find out if there are any clear mechanical problems before committing to purchasing the car, registering it, and maintaining it for its entire useful life. In the same way, an inventor should want to know if there are clear flaws in the idea of ​​patenting an invention before committing to filing a patent application (registration) and paying thousands of dollars in maintenance fees to maintain the useful life of the invention. issued patent.

Just as the review mechanic cannot guarantee that the car will last forever, a patent finder cannot guarantee that there is no prior art that could block obtaining a patent. The mechanic looks for bad news that can be discovered without having to remove all the bolts and washers from the car. The patent search engine can search for the state of the art, in the native language of the search engine, in computer databases around the world. However, the patent seeker is unlikely to know of a single copy of a Swahili PhD thesis on a library shelf in Tajikistan. Therefore, care must be taken to have a very good seeker involved with the understanding that the search must go as far as possible, but at some point it must reach a limit.

Novice inventors sometimes do their own patent search and claim they found “nothing like it” regarding their invention. The missing reality is that your search was not competent. While there is no way to find every piece of prior art in the entire universe, there is also no way to properly search and not find at least some things related to the invention.

Another problem for novice inventors is finding the prior art exclusion after conducting a proper search before filing a patent application. The fact is that a patent finder can only find what is publicly available. If a search is conducted on February 1 and the patent application is filed on April 30, the patent office examiner may find a prior art that was only published on February 2.

Unfortunately, it is quite common for a patentability search to produce a ton of prior art, so now there is a way to get a patent for the invention. The good news is that the bad news is discovered before spending time and money preparing and filing the invention patent that would have been immediately rejected. The conclusion of the inventor who loses in the search for a patent is that he now has a comprehensive review of the state of the art, which should be useful to know other aspects that can be incorporated to improve the invention. The inventor can now brainstorm by focusing on important novel aspects of the invention over and above the prior art.

After further consideration of the unforeseen aspects of the prior art, the inventor should focus on pointing out which aspects are missing from the prior art so that the invention may contain various inventive steps above the general state of the prior art. To put it more bluntly, the inventor needs to go back to the drawing board and put more meat on the current skeleton. The discovered pieces of the prior art will help the inventor to progress.

By Frederic M. Douglas

Copyright 2012, Frederic M. Douglas, All rights reserved.