Understanding the Elements and Importance of Patent Searching
What Are the Elements of a Patent Search?
Patent searches are performed to obtain valuable insight into potential third-party rights as well as the potential for obtaining a patent registration. A search can help prevent the spending of time and money in the patent prosecution process and/or in the launch of a product that could be in conflict with the rights of a third party.
What Are the Important Elements of a Patent Search?
A proper patent search should include the following:
a professional patent searcher experienced with the relevant technology;
a review of the proper databases and information resources for identifying similar, relevant art; and
review by an experienced patent attorney for providing a patentability and/or potential fror infringement opinion based on a review of the patent search results.
The Professional Patent Searcher Element
Many people have Google® as the go-to-resource for finding quick information and answers to the unknown. But, when high stakes are at risk, the mere amateur research using an online search engine should not be the deciding factor related to patentability of an invention or patent infringement from a new product.
Professional patent searchers have extensive experience in a specific field of technology and daily perform research to obtain the most relevent search results for new products and inventions. Many professional searchers have education and experience with technology and handle searches specific to the art they are most familiar with, making them much more experienced in search terms, keywords, and terminology than most. Since they perform searches often, they often have the best understanding of where to look for information and how best to search for it.
They typically charge a flat hourly rate for searching and can usually provide an estimate based on the specific technology involved. They can also discuss the disclosure with an inventor to get a better understanding of the exact nature of the invention to perform the search.
Relevant Databases and Information Resources
Since a patent search is obtained to determine whether prior art exists, it will include a review of previously published United States Patent and Trademark Office (USPTO) applications, journals, magazine articles, books, manuals, websites, and any other available publications that can be searched publicly and online. While preliminary online research may uncover some relevant results, a thorough search would require research of the PAIR (Patent Application Information Retrieval) system with the USPTO, a database to research and download publicly available U.S. patent information.
Note, however, that filed patent applications remain private until published, typically 18 months after filing. A prior filed application can become prior art to a later filed application even though not publicly disclosed. This is why professional patent searchers are most helpful in pulling search results, as they perform searches daily for the relevant technology, know the best keywords to use, and the best terminology to identify relevant results that are not limited to published patent data with the USPTO.
It is important to understand that a patentability search is not a guarantee that issues will not later arise within the examination process or that a third party will not claim patent infringement. A patent search does, however, help provide a view of the potential obstacles based on publicly available information from various databases and information resources.
Patent Attorney for the Analysis and Opinion Element of a Patent Search
Once a proper patent search report is pulled, a review and analysis is required. Another most important element of a patent search is the analysis and opinion of the results. While patent searchers provide the results, they are typically not licensed patent attorneys and will not include a patentability or infringement opinion.
Therfore, the use of a licensed patent attorney with experience in the field of the subject technology can provide the analysis and interpretation of the results needed to help an inventor determine viability of an invention for registation as well as to gauge procesution hiccups, potential bars, and expenses. Search results are simply that, results. However, an attorney will transform the results into an explanation of the meaning of the results and how they can affect an inventor’s decisions for next steps. Sometimes, a search simply provides a green light. More othen, search results require some discussion and decisions on options to proceed. An experienced attorney can provide guidance and options for inventors to help make the most informed decisions necessary to protect their investments.
Additionally, to prepare and file an application for registration requires skilled writing and adherence to very specific USPTO requirements for the content and format of patent applications.Experienced patent attorneys will utilize the patent search results to craft applications with language and specifications to help overcome prior art identified and help with the overall patent procesution process.
For more insights on patent protection, see our Patent Services Overview and Industry Focused Legal Solutions pages.