Patent Searches Add Value to the Patenting Process

Before investing in patent applications, it is advisable to seek counsel and conduct patent searches for any possible blocking patents. A patent search could help the inventor assess the scope of protection available and where to file patent applications. Additionally, searches identify issues to prevent possible infringement of existing patents. Results from patent searches could aid in drafting the patent application and, ultimately, in deciding the scope of the claims.

First Steps In Process for Patent Searches

Counsel typically sets up an inventor disclosure interview to discuss key innovations in the invention and strategize where patents protection would be best served. For example, the best jurisdiction to file for protection, initially. Imagine a company with manufacturing or competitors in Germany.  Conducting searches in the German Patent Office and/or the European Patent Offices makes most sense. Counsel summarizes key innovations after the interview.  Then, counsel sends a request to a professional prior art searcher with instructions for a patent search. The prior art searcher, in turn, conducts a search utilizing records from the relevant patent issuing bodies. For example, the U.S. Patent and Trademark Office and the European Patent Office.

What to Patent Searches Include?

Patent searches could include the following information associated with or potentially related to the innovation:

  • Investigating and identifying classification numbers

  • Key words

  • Inventor names

  • Competitor names

  • Technology

  • Art units

The prior art searcher uses this information and summarizes the results of the patent searches and prepares a report. Counsel then reviews the patent searches and discusses the results with the inventor. Then, based on the references found in the patent searches, counsel and the inventor could decide the strategy going forth. The strategies could include conducting secondary patent searches on a particular aspect of the innovation or a particular company or inventor name that appears in the patent searches.

Using Patent Searches

Ultimately, counsel could use the results from the a patent search to help draft a strong patent application for the invention (or avoid any overlaps in protection). For example, the results of the patent search could indicate that the technology space is not well developed and that there may be potential for the invention to receive broad patent protection. In other cases, patent searches could help the inventor make an informed business decision on whether to proceed with investing in a patent application. For example, the results of the patent searches could reveal several references that are almost on point with the invention. In these cases, the inventor may decide not to pursue the patent application(s) based on the results of the patent searches.

About the Firm:

Klemchuk LLP is an Intellectual Property (IP), Technology, Internet, and Business law firm.  The firm offers comprehensive legal services including litigation and enforcement of all forms of IP as well as registration and licensing of patents, trademarks, trade dress, and copyrights.  The firm also provides a wide range of technology, Internet, e-commerce, and business services including business planning, formation, and financing, mergers and acquisitions, business litigation, data privacy, and domain name dispute resolution.  Additional information about the IP law firm and its IP law attorneys may be found at www.klemchuk.com.

Klemchuk LLP hosts Culture Counts, a blog devoted to the discussion of law firm culture and corporate core values with frequent topics about positive work environment, conscious capitalism, entrepreneurial management, positive workplace culture, workplace productivity, and corporate core values.

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