In my nearly twenty years of experience as a U.S. patent attorney, I have found that novice inventors have many misconceptions about the U.S. patent process.
One of the biggest misconceptions concerns patent searching.
New inventors seem to think that there is a magic fool proof process for determining, for certain, whether they will be able to obtain a U.S. patent.
There is not.
Patent searches, which may or may not be done prior to filing a patent application, are not fool proof.
There are many reasons why they are not fool proof.
For one, there is way too much information and other items which can impact whether you can get a U.S. patent or not. This information and other items may include not just millions of U.S. patents, but millions if not billions of U.S. publications, foreign patents, foreign publications, products offered for sale or in public use in the U.S. and potentially other items or information.
If you are old enough to remember, imagine the amount of information in a set of encyclopedias. Now image literally billions of sets of encyclopedias. Now imagine you are a patent searcher attempting to sift through and analyze information in billions of sets of encyclopedias. It is a herculean task.
And with the proliferation of the internet, the amount of information which could impact whether you can get a patent or not, is growing everyday by leaps and bounds. It is no exaggeration to say you may be looking not for a needle in a haystack, but a speck in billions and billions of haystacks.
When looking at it this way, it is easy to see how someone could spend the rest of their life searching and still not find the speck of information that they are looking for.
This is why, if someone is going to do a patent search, typically they do a “preliminary” patentability search prior to filing. The preliminary patentability search may “knock out” some inventions, i.e. make an inventor not want to file, and may also help to give a patent attorney a feel for what is in the prior art so that the patent attorney can draft a patent application more narrowly.
However, the U.S. Patent and Trademark Office does not require that a search be done prior to filing a patent application, and in a typical case, the U.S. Patent and Trademark Office will do their own search.
Before you pay a patent attorney or someone else to do a patent search, it wouldn’t hurt to do some searching yourself . Searching on the internet, such by using GOOGLE® PATENTS and/or the U.S. Patent and Trademark Office Web Site, www.uspto.gov is FREE. Your search, or anyone else’s, will never be fool proof, but you may be able to determine that your invention has been done, or you may find information which may help your patent attorney draft a patent application.
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Copyright 2011 Law Offices of Walter Tencza, Jr. All Rights Reserved.
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