It would be unfortunate if after years of work and thousands of dollars in expenses in the development of a prototype, you find out that you cannot get a patent because the invention is already known or is in the public domain. Even worse, if you use, sell or manufacture your idea you may be sued by the original inventor for infringement. It is therefore an essential step to conduct a thorough search at the outset of the process to make sure that your invention has not been invented before.
Staking your invention: A search will also provide you with a better insight of the prior art. Writing claims to your invention without having a good understanding of previous inventions is like planting stakes for a property without knowing where the neighbors are. Too wide an area being claimed, and your invention is rejected because it overlaps existing inventions. Too narrow an area, and you are depriving yourself of rightful coverage.
No search is perfect: A good search is important to avoid wasted investment in time and money later on; however, no search can be guaranteed to be perfect. Any publication, anywhere in the world since the invention of the alphabet, could invalidate a patent. In addition, patent databases are enormous and discovering all relevant prior inventions may not be possible within the time and monetary constraints of the search.
Challenges after patent award are possible: Examiners at the US Patent Office and patent searchers may overlook some relevant inventions: should you apply to patent an idea that is already in the public domain, your patent may erroneously be granted to you, giving you a false confidence to invest heavily in your invention. Later, you may have to sue an infringer. You can be assured that during litigation, your opponent will perform as thorough a search as he can, leaving no stone unturned. Your patent may then be found invalid by the court. How much time and money should you initially invest in a search? It should be in proportion to your anticipated overall investment and return from your invention..
Do not hide relevant prior art: If you know prior art that may limit the scope of the invention, do yourself a favor and tell your patent attorney or agent. Hiding this information could cost you dearly in future litigation.
Search Engines: Most industrialized countries provide powerful patent search engines on the Web. However, because the US is the largest market for intellectual property, most patents are first filed in the US. Consequently, the US patent database is the largest and any search should begin with the US databases.
The US search engine is significantly more powerful than those of other countries and it has access to two databases. The first includes issued US patents. The second covers published applications in the examination pipeline, on their way either to become patents or to be rejected. The following search engines can be found on the Web:
US Patent Office:
http://www.uspto.gov/patft/index.html
(Includes patent database and application database)
European Patent Office:
http://worldwide.espacenet.com
Japanese Patent Office:
http://www19.ipdl.inpit.go.jp/PA1/cgi-bin/PA1INIT?1314759859511
World Intellectual Property Office (WIPO):
http://www.wipo.int/patentscope/search/en/structuredSearch.jsf
Canadian Patent Office:
http://patents.ic.gc.ca/cipo/cpd/en/introduction.html
International list of patent offices can be found at:
www.uspto.gov/web/menu/other.html
Commercial search engines can also be used to perform your search. Google offers a diversity of tools that can provide you with a point of view different from any government sponsored search engine. A general “Google” search will yield patent as well as non-patent information and may include marketing and manufacturing data. Google also provides a patent search engine at: http://www.google.com/patents.
Do it yourself / Let a professional check it. Performing a good search will save you time and money in the long run. My recommendation: Perform your own search on Google and on the Web. If you determine that your invention already exists, you can stop further effort and expense developing it. If your search doesn’t yield anything, ask a professional to do the search again. If the professional does not find invalidating prior art, consider filing for a patent.
For archived newsletter and a lot of information for the small inventor go to: www.patentsandventures.com.
If you have any question you can contact me at (858)259-2226 or email me at glevy@patentsandventures.com.
This newsletter should not be construed as being legal advice. ©2011 by George Levy
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