written on May 06, 2009 by David Burge
No law requires that a patent search be conducted before one files a patent application. But preparing and filing a patent application without first obtaining and taking into account the results of a carefully conducted patent search can be, and often turns out to be, an enormous mistake.
Arranging for a patent search usually means that someone in need of a selection or collection of patent documents relating to a particular subject (such as an invention being considered for patent protection) commissions an experienced patent searcher to locate and provide such pertinent patent documents as the searcher can find without exceeding a budget agreed upon to fund the search. If you engage a Registered Patent Attorney to perform a patent search or other work, the work product will be protected by an attorney-client privilege. If, on the other hand, you engage a non-attorney, no attorney-client privilege will apply to the resulting work product, and some form of written agreement regarding confidentiality may be appropriate.
Patent searches can serve many purposes. A "patentability search," for example, looks for patents that are pertinent to an invention and should be taken into account if a patent application is filed. An "infringement search" seeks patent documents useful in determining whether a new product presents patent infringement concerns, and typically watches for 1) active patents having claims that may be infringed by the new product, and 2) expired patents showing that some of the features of the new product have long been in the public domain and therefore perhaps do not raise infringement concerns. A "validity" search looks for patent documents and perhaps other "prior art" showing that a particular patent ought not have been granted (it being understood that patent invalidity is one possible defense that can be raised when an entity is charged with patent infringement).
If a product designer encounters a problem he or she does not know how to solve, a patent search organized to collect patents that show how others have addressed the same or similar problems is almost always helpful. Far too many inventors squander their time and other resources "reinventing the wheel" when solutions to many of their design problems are available in patent documents that can be collected quickly and economically by commissioning a patent search. When you review the patent documents that comprise the results of a patent search, you are likely to find usable solutions suggested not only by the successes of your predecessors, but also by their mistakes.
If your business needs to offer a new product or take some other course of action that seems blocked by a still-active patent, try working with a Patent Attorney to find various "design around" approaches that sidestep the protections afforded by the problem patent. Providing "design around" assistance is a mainstay of the Patent Attorney's bailiwick. When a Patent Attorney combines what he or she learns from a review of the USPTO's file history of the problem patent with information gleaned from patent documents located during a patent search of adequate scope, what often emerges are non-inifringing "design around" solutions you can utilize to side-step the problem patent.
"Patent watching" is a patent-search-related activity used by many businesses to keep track of industry trends, and to avoid unintentionally infringing the intellectual property rights of competitors. In establishing a "patent watch," you arrange for copies of newly issuing patents of your competitors to be provided as they issue, and for copies of the pending patent applications of your competitors to be provided as they are published. Your competitors are likely to be using to their advantage the information found in new patent documents. Can you afford to ignore it?
Because inventors from around the globe have long sought patent protection in the United States for the best of their inventions, the engineering library that is comprised of U.S. patents and published U.S. patent applications is one of the finest technology resources that can be found anywhere in the world. Making use of this marvelous resource to locate patent documents pertinent to your needs, to your industry, or to your invention will help you understand the state-of-the-art so you know what is going on in the business and industry you serve.
Even trying a bit of do-it-yourself patent search work can prove useful, especially if you stick with the task long enough to become comfortable interrogating the database that the U.S. Patent and Trademark Office makes available under the topic "Search Patents" at www.uspto.gov. Years ago, after I had spent one summer between college semesters working at a DuPont film plant in Iowa, I was surprised to find a much respected, fast-rising engineer from the DuPont plant doing patent search work in the Public Search Room of the U.S. Patent Office then located in downtown Washington, D.C. I was there doing patent search work in the employ of General Electric during weekday hours to pay the cost of attending Georgetown Law School during evening hours -- but the engineer was still employed by DuPont at the plant in Iowa, and he was on vacation. With coaxing the engineer explained that for several years he had been able to make valuable contributions to his work for DuPont by assembling good ideas gleaned from patents. He looked for patents relating to industries other than the one he served, and found ways to adapt them to his work and to his industry. He attributed much of his success, and his larger than usual pay increases at DuPont to his quietly using a few vacation days each year to locate patents that sparked ideas he was able to use in his work at DuPont.
If you have an inventive idea, try researching it a bit by logging onto the USPTO website and interrogating the patents database to find patents containing keywords that describe your idea. If you find patents that are on-point with your idea, studying them may spark even better ideas as you learn about the successes and failures of others who have given thought to the problem addressed by your invention. If you believe you have an invention that is novel, non-obvious and useful, consider consulting a Registered Patent Attorney about having a patent search conducted professionally. If the search results are favorable, consider working with your Patent Attorney to apply for patent protection. Others who have had success exploiting their inventions have followed the same path, taking one careful step at a time, beginning with a patent search.