On the Tom Martino show the week before last, there was a call from a person inquiring about patent searches. Tom expounded on the caller’s inquirey and asked me how a person that has a new idea should search to see if their idea is already in the public domain or is currently patented. Given the constraints of live radio, I never fully answered the question so I decided to provide a more detailed response here.
Step One: Perform your own informal invention and patent search. How? first, go to Google or anyother suitable search engine and perform keyword searches that pertain to your invention and see what comes up. If the product or service is already commercially available or publically known, chances are very good that you cannot patent your invention. Make a note of those products and services that are close to your invention. You may want to print out the materials for review by a patent attorney in a subsequent step. Next, search the USPTO web site or Google Patents to see if anyone has patented an invention similar to yours. Again make note of those inventions most similar to yours.
If you find references that indicate your invention is publically known and/or available, the process is probably over for you. No need to proceed any further with this invention. However, if you are still unsure whether small distinctions between your invention and those you found during your search are potentially patentable, please do not hesitate to contact a patent attorney for a quick review. I cannot speak for other firms, but the attorneys at Leyendecker & Lemire will quickly review the closest materials you found during your search during our free consultation and give you an assessment as to whether proceeding any further makes sense.
Step Two: See a patent attorney to discuss your results. As mentioned above, Leyendecker & Lemire can usually perform a quick review of the materials you have found within the free 1/2 hour initial consultation. I assume other patent firms might provide the same service as well. We can typically tell you whether the closest materials that you identified are relevent to the patentability of your invention. It is not uncommon for us to conclude that material that an inventor did not think was problematic is in fact problematic. In other circumstances, we have concluded that similar inventor identified prior art is not a problem.
At the very least, you will leave the meeting with a better idea about the patentability of your invention and the potential scope of patent protection available with respect to the materials you identified during your search. For many, this will be the end of the road for a particular invention. For others, the prospect of protecting their inventions with patents will remain very much alive.
Step Three: If your search did not reveal anything that would effectively thwart your ability to obtain patent protection, you will have a choice to make: (1) have a patent application prepared and filed; (2) have a professional search performed; or (3) of course, do nothing (at least with respect to protecting your invention). In most situations, we will recommend the second choice over (or before) the first. Our experience has shown that in almost all cases our patent searcher will identify relevent prior art that you missed in your informal search and often this material will significantly narrow the scope of patent protection potentially available to you.
A patentability search and opinion is not free and you might be tempted to skip it and proceed directly to the next phase of having an application prepared and filed; however, you would do so at great pearil. A point of reference roughly two thirds of the people we do searches for ultimately decided not to proceed with the patent application. The primary reason for this is that our search and opinion reveals that their invention is either not patentable or the potential scope of protection that they could receive from any patent would be so small as to not make the expense of obtaining a patent worthwhile. Essentially, we view the money spent on a patentability search and opinion as being a kin to insurance. If your search comes out similarly to the majority of people we do searches for, you will probably not opt to spend thousands of dollars on a patent application with no or limited upside potential. In other words, the search may save you $5000-$10000.
Chances are you’ve done some Internet searching and have seen ads from other law firms or invention promotion companies they claim to provide patent searches for couple or few hundred dollars. Some provide reasonable prior art searches and others do not. But what most if not all of these inexpensive services fail to provide is a detailed report including a reasoned opinion from a patent attorney that indicates your chances of obtaining patent protection for embodiments of the invention of varying scope. Some purport to provide opinion of patentability but the ones I’ve seen tend to be something on the order of a sentence that states “your invention may be patentable”. Well, I can tell you that right now: your invention may be patentable. What you really need to know is not whether some aspect of your invention may be patentable, but whether, the scope of protection potentially available to you is sufficient in breadth to warrant the expense of obtaining a patent. We endeavor to provide that information in our search report, and we make ourselves available to the inventor after they received the report to explain the information contained therein and expound upon the report.
Step Four: Decide whether proceeding with having a patent application drafted and filed is worthwhile. To this decision, there are no right or wrong answers. For some, the cost to obtain a patent is just too great. For others, the potential value of patent protection is sufficient to proceed even when the search report is less than glowing. Frankly, we cannot answer the question of whether to proceed for you, but we are available to answer your questions concerning risk and potential scope of protection of a patent on your invention. With these tools you should be able to make an informed decision that fits with your personal circumstances.
For more information on patent searching as well as links to various patent searching sources, please reference the patent searching page on a website at https://www.coloradoiplaw.com/patent-law/about-patent-searching.html. And to free to call us to schedule a complementary half-hour consultation, either in person or over the phone for your convenience.
