For most inventors a patent search should be the first step in the patent application process. The reason is simple. A patent search is used to determine whether the time and expense of moving forward with a patent application is a worthwhile endeavor. The patent process can be expensive, so the last thing you want to do is spend a lot of time and money preparing and filing an application when there is easy to find prior art that will likely prevent a patent from issuing. Likewise, a patent search can give you a good idea about the likely scope of any patent claim that you may be able to anticipate. If it looks like you will only get an extremely narrow claim it might not be in your best interest to invest in the patent application. You can then move on to your next invention, and inventors always have a next invention.
Still further, a patent search will give you an opportunity to discover which aspects of your invention are most likely to contribute to patentability, thereby allowing the description in any filed patent application to focus on those aspects most likely to contribute to patentability. Without a patent search you would just be describing all the various aspects of your invention as if they are equally important, which we know won’t be the case.
For these and other reasons many inventors and businesses will frequently choose to begin the process by paying for some kind of patent search. Of course, careful review of the patent search report, any opinion or assessment provided by a patent attorney and thoughtful consideration of the patents that are found is critical. Unfortunately, in my experience a lot of inventors only give a cursory review of the patents found, thereby missing a great opportunity to use the prior art found to focus in on what is most likely unique and patentable.
In comment posted some time ago on an older post relating to the top 5 mistakes inventors make an attorney wrote:
Gene, I know this is an older post, but I couldn’t help but add a no. 6 to the list. This happens frequently and when patent counsel is on board, no less. A patent/novelty search is performed by a professional outside search company (at my insistence) and perhaps 50 or so “hits” of patent and non-patent prior art are cited in the search report. Although the report does not provide a detailed opinion as to patentability, the search professional states in the report or accompanying email that the first 6 or so cited references appear highly relevant to the disclosed invention. I forward the search report to the client, along with the necessary instructions and required disclaimers, and ask the client to review the search results and provide me with comments for discussion. Inevitably, the response in each case from the client is a simple two-word statement: “Nothing relevant.” That leads me to believe two things: 1) the inventor did not review the search report, or 2) the inventor is clueless. Given that in each case the inventor is highly knowledgeable, analytical, and understands the technology (whatever it may be) at a sophisticated level, I tend to think that it is the former – the inventor simply did not read the report, or only gave it a very cursory review, e.g., only the titles of the cited art were considered. Whatever the case, this is a huge mistake. I know it is tedious, but I need inventor/client input as to prior art for claim drafting strategies. I always encounter resistance as to this important, IMHO, step in the drafting process. Your thoughts? Does this happen to you?
This is a problem that I suspect virtually all patent attorneys experience. I do everything I can to work with inventors to get them to understand the need to focus on the patents located. I think most inventors read the patent search report, but an awful lot do not actually read the patents themselves. What I try and do to get inventors to focus on the patents that matter the most is to identify the few that are the most relevant and then engage in a discussion with them about those patents, steering them to focus on the parts that are closest and need to be distinguished. I find that if I ask inventors to focus on any more than 3 to 5 patents all they will do is look at the titles, perhaps look at the pictures, maybe read the Abstract. Inventors get overwhelmed. There is a lot to a patent, but the inventors who really take the time to read the key patents found in the search will be able to most meaningfully contribute to the decision about whether to move forward, and then ultimately to meaningfully contribute to the preparation of a patent application that describes the invention as completely as possible, covering a variety of nuances, alternative embodiments and detail that is critical.
The inventors that I work with are highly intelligent and motivated, and when you explain to them the process they seem to understand the task at hand. By and large most seem to be looking for guidance, so a step by step approach can be quite effective. The inventor has the knowledge of their own invention, and when they see something that looks similar they can be coaxed to provide critical information; namely that the reference is problematic or there is an aspect of the invention that perhaps has not heretofore been described with as much detail as possible. Through a collaborative approach I find that I can work with inventors to identify the patents that are truly the closest and how those inventions are similar and how they are different. This is critical because the inventor is in the best position to identify the differences and the patent attorney is in the best position to determine whether those differences will likely contribute to patentability. To work properly there needs to be collaboration. See A Beginners Guide to Patents and the Patent Process.
Determining how the prior art is similar and how it is different is essential to being able to offer an opinion, and it also allows for the gathering of a great detail of information about the inventor’s invention, which will be extremely helpful if and when the inventor decides to move forward with a patent application. The amount of detail that can be put together makes writing a patent application a much smoother process, and invariably leads to a far more detailed written description of the invention. If no serious road blocks are found the patent search can and will normally lead to a better, stronger patent application. The reason a patent search leads to a better, strong patent application is because the first application filed is absolutely critical. All aspects of your invention must be disclosed, nothing new can be added without compromising the all important filing date (aka priority date). With a search the initial disclosure can be specifically written to carefully define and expand upon what is most likely the patentable feature or components.
A detailed omnibus disclosure of the invention in a patent application can form the foundation of an entire patent portfolio, but at least it will allow for the addition of claims during prosecution with the patent examiner. Yes, claims can be added to an application after filing. The prohibition is against adding new matter. Matter is not “new” if it was present at the time of filing. So it is critical to include the most detailed description possible. Everything from broad to narrow with discussion of as many different versions of the invention as possible. When this is done informed by the results of a competent, professional patent search and gone over with in a collaborative manner between inventor and patent attorney the results are an astonishingly well written patent application that will lead to a strong patent.
Not only does a patent search allow for focus to be placed on what is different and most likely patentable, but if knock-out prior art is found then the expensive a patent application has been saved. I always tell inventors that they are creative people, much in the same way an artist or song-writer is creative. In my experience, all creative people are creative by nature and that typically means future creativity. If you spend all your fund and strain your resources on the first invention you may be necessarily putting yourself in a position where you cannot move forward with what is next, and what is next might be even better. There is no way to know for sure, and taking risks on some level is necessary to succeed, but starting with a patent search leads to a better product and can help you cut and run, moving on to whatever is next if the likelihood of obtaining a patent is low, or the likely resulting rights would be too narrow to warrant the time and expense of a patent application.
Many times people will say that they have already conducted a patent search themselves and have found nothing, and/or they will say that they have never seen anything like it in the industry. These are all helpful, and such study should be undertaken by every inventor, but if you are not intimately familiar with searching techniques, as well as intimately familiar with the Patent Classification System, you are all but certainly not going to find what you are looking for in your own search. There is always going to be prior art for every invention. See There is no prior art for my invention.
Almost every time I search I am searching for inventors who say they found nothing, and every time I find patents that were findable in the Patent Office database but not located by the inventor. Sometimes that patents are tangentially related, sometimes they are quite close and sometimes they are exactly (or nearly exactly) what the client has invented. In my career I have personally done several searches where the client said they looked and when I searched I found the exact invention already patented. But this is why you do the search. It is better to spend a modest amount of money on patent search now to learn about the prior patents. The nightmare scenario is you don’t do a patent search and spend thousands of dollars on the patent application only to learn later that no patent could be obtained. Having said this, doing your own search and learning whatever you can from the prior art makes all the sense in the world. For those who are interested in a searching primer see Patent Searching 101 and Patent Searching 102: Using Public PAIR.
Editorial Note: This article was originally published on March 21, 2010, but has been updated and republished December 22, 2012.
Join the Discussion
21 comments so far.
Mark NowotarskiDecember 29, 2012 02:52 pm
AnonDecember 29, 2012 02:06 pm
Mark states “ As you may know, you can only claim what you are in full possession of when you file.”
I would add a note of caution, as this sounds to only having an actual reduction to practice as opposed to a constructive reduction to practice.
Theses are very different requirements – do not sacrifice what you are entitled to just because of a lack of actual reduction to practice.
Stan E. DeloDecember 29, 2012 01:24 pm
Very well said, and it is exactly what I did with my concept for wind turbine speed control. I built a working 12-ft diameter experimental prototype, and mounted it on a fairly short test tower to try it out for several weeks during the winter windy season here. The short tower allowed me to watch it at very close range, and take some very interesting HD videos and pictures of it in action.
I was very fortunate, in that a particularly nasty wind storm came through during the test period, gusting up past 55MPH, and veering around by sometimes 30 degrees or more in seconds. I could stand about 2 feet away from it at speed, and it was virtually silent, meaning that there was no significant stalling happening, and the rotor just went up to about 400RPM, and stayed there, no matter what the wind threw at it. I was very pleased, as you might imagine. I was able to look at the mechanism later and see what had been happening by observing the slight wear patterns on the *cams*, and it looked to be well within my somewhat stringent standards.
We called it a Turbine With Automatically Adjusting Pitch, with ocean current or river types of applications included in the claims. You won’t be able to find it unless a patent issues, as we requested non-publication when we filed the application, about a year and a half ago.
Happy New Year!
Mark NowotarskiDecember 29, 2012 11:01 am
You’ve raised the very interesting question of “What does it mean to be in full possession of an invention?”. As you may know, you can only claim what you are in full possession of when you file.
It seems to me that the real cost of broadening what you are in full possession of is the cost of running the experiments. Instead of worrying about the costs of a few extra claims, you might want to work with your patent agent/attorney to define the full breadth of what you want to claim and then specify the most cost effective experiments to run to demonstrate you are in possession of that desired full breadth.
Stan E. DeloDecember 27, 2012 05:49 pm
Sometimes I find it difficult to even understand what my invention is actually capable of., because it is very new, and I am still trying to observe how it actually seems to behave in different conditions and exactly why. We might have been able to claim a bit more, be we were looking at the cost of including more claims, that might be somewhat obvious to the proverbial PHOSITA anyways.
Stan E. DeloDecember 27, 2012 05:27 pm
Sometimes I find that the figures do more for me initially, but then I have to describe them accurately, and try not to leave any positive aspects of them not described, which is not easy to do at all. Since I am not formally trained, I just use the spec and figures to try to convey the invention adequately to a qualified practitioner, who can then hopefully have a good idea of what it might be possible to claim, and maybe even get away with it during examination.
I use a patent drafting software to get to that point, somewhat like Gene’s Invent+Patent System (TM)
Mark NowotarskiDecember 27, 2012 05:22 pm
Interesting follow up. For me, most of the thinking goes into the figure preparation. Once the figures are nailed down, the rest is already “written” in the sense that I know what I’m going to say. Actually putting the words to paper is a fairly mechanical exercise.
When you say the driver is claim strategy, I certainly would agree, but can you elaborate? In your opinion, what are the major drivers of claim strategy?
AnonDecember 27, 2012 04:19 pm
How do you fold in claim strategy? I assume you have some process for fallback positions, scope of coverage, types of claims, etc..
Do you find that as a visual thinker that your pictures are ‘worth a thousand words?’ Do you find that you employ your basic figures-spec-claims on any type of recursive basis (revisiting the figures after the claims have been drafted)? What is the breakdown on time per each section (generally)?
I find that driver tends to be the claims and claim strategy, but that the specification usually is drafted first*. The claims easily taking the most time.
*first is rather squishy, as usually that is the starting point, but there is almost a high jump back and forth factor after that initial spec draft, and the final spec almost never looks like the initial spec.
Mark NowotarskiDecember 27, 2012 04:00 pm
Thanks for the input on Patent Hunter. Very helpful.
Regarding my drafting technique, I start with an idea of what might be patentable and do an intensive patent and nonpatent literature search to refine the idea. I then draft the figures (being a visual thinker) followed by the spec. Formal claims come last with tweaks to the spec to make sure I’ve got full support for the claim language.
Stan E. DeloDecember 24, 2012 05:37 pm
Just out of curiousity, do you usually start out with the claims first, and then derive the specification from that? I have heard of it done the other way round, but perhaps a little of both might be the right answer? It seems as if you might have to go back and fix the spec later to reflect the wording included in the claims that seem possible if you wrote the spec first, but to each their own I suppose.
Stan E. DeloDecember 24, 2012 04:59 pm
The late eighteen hundreds must have been a very interesting time, as I found scads of patents for wind turbines from that era, some of them going clear back to the early 1800’s. The American industrial revolution I guess, in many different fields. I even found President Lincoln’s patent for a way to assist large river boats when they got stuck, generally, that must have been from the 1850’s, and even the very first patent for running the seams of sails horizontally instead of the then normal pratice of running the seams vertically, just because it was easier. I think the sail patent came from an English applicant, but that was quite a while ago. It was probably from the late 1700’s, but I can’t recall exactly right now.
Stan E. DeloDecember 24, 2012 04:36 pm
BTW- The PatentHunter uses PDF’s, so if you need a TiFF image you can just go straight to the PTO site and look at whichever pages seem to be needed in more detail.
Stan E. DeloDecember 24, 2012 04:31 pm
Yes I did try it out several years ago, and was pretty impressed with it. What it does it take your search terms and automatically loads the patents into your computer where you can open them in mere seconds instead of minutes. I like the PTO database because they use TIFF images which can be magnified greatly with excellent detail, as often it helps me to understand the drawings and the invention better.
While the bulk download is happening in the background, you can do virtually anything else you like meanwhile, like perhaps giving your attention to writing the claims and spec for instance, and being able to go back and and pull up the relevant patents from your own RAM as you discover what you need to look for. If you really like it, you might be able to help Michael by giving him some feedback on it, as I know he is always trying to improve his products as much as he can. By the time I had found out about it, I had already done the lion’s share of my search the hard way, so haven’t tried it lately.
A few years back, the PTO searches were sometimes slow, because they were getting huge bulk downloads from overseas, which I think Director Kappos fixed by setting limits on how many patents you could download in a given amount of time, according to a patent agent friend of mine, or they just upgraded theit IT infrastructure instead, but I am not sure which is really true.
Gene QuinnDecember 24, 2012 02:36 pm
The more you read and thoughtfully consider the better the product. I wish I could teach all inventors how to do a minimally acceptable patent search and then actually get them to read the patents (and not just look at the pictures).
The more you know… like that NBC commercial says.
If you haven’t already take a look at this article about sleighs…
I was really fascinated. You can really see the evolution and the problems people were facing and trying to solve. If inventors did this kind of far reaching research they would be so much better off! They would see what is out there and come up with all kinds of new ideas and inventions. Reading patents is a great way to stimulate creativity.
Gene QuinnDecember 24, 2012 02:33 pm
I think not doing a search in the scenario you set forth is a really bad idea. One time I had a client who I did a patent search for, we found the invention and then he wanted me to write a falsified opinion and analysis so he could raise money. I declined that invitation and immediately disengaged.
Only good can come of doing a patent search if the client is really interested in getting a good patent and legitimately attracting serious investors. Dr. Gary Michelson, who is a Hall of Fame inventor, once told me that he wants the broadest patent claim possible that is going to be valid. He said point blank — why would I want a broad claim that is likely invalid? Serious inventors think that way. If your invention is going to make money there will be licensing opportunity and potentially a legal fight of one kind or another. A weak patent that is likely not valid isn’t wise. I choose not to do business with folks who are trying to pull one over on people.
Having said that, there can be times when no search is fine (in my opinion). If you are going to file only design patents I don’t think you likely need a search. The cost of the search is too high compared to the cost of the entire patent process for designs.
I’ve had clients tell me they are really only interested in the “patent pending” and if they can get something, no matter how narrow eventually, that is all they care about. In that case a search isn’t really necessary, but I always add the client’s desires/instructions into the engagement letter if I do accept this kind of representation.
The most common place where searches aren’t necessary is if you represent a serious company that innovates within a space they know well. If they know who the other competitors are and what they are working on and what is known in the industry, etc. etc. then a search probably isn’t necessary or helpful. What you will find is likely less than they can tell you themselves. Of course, independent inventors and small businesses and start-ups always think that is where they are and they “know” the industry. That is, of course, not true. You really need to be a player in the industry to know. If the client can’t tell you who the other companies are and what Universities may be working on something like this then they are not at the point where they can and should go without a search (in my humble opinion).
Mark NowotarskiDecember 24, 2012 12:23 pm
Thanks. Have you used it? What do you like about it?
Stan E. DeloDecember 24, 2012 12:13 pm
You might try giving the PatentHunter a test drive. You can try it for 60 days for free to see if it will work for you.
Mark NowotarskiDecember 24, 2012 11:52 am
Very timely. I’m in the process of evaluating new patent search software. I’ve used Delphion for many years, but it’s too slow. If anyone can recommend anything better, I’d love to hear your suggestions.
I use patent searching as part of my claim drafting. I prospectively identify what appears to be patentable and then test that right then and there. So I need a very precise search syntax, fast search speed (less than 1 second response), and instant presentations of figures and abstracts. Searching forward and backward references is particularly helpful for mechanical inventions.
Stan E. DeloDecember 23, 2012 01:32 pm
I discovered a really valuable aspect of doing my own initial patent search, that was really quite enlightening. I did a very extensive search for several different concepts that were somewhat similar, probably going overboard quite a bit, because I had the time, and not a lot of money. I started with a word search to get close, and then used the found classification numbers to do a more focused search, since the classification search traverses language that the inventor or searcher might not be familiar with.
Strangely enough, I found myself fascinated with seeing what others had done before, and I spent many hours happily finding some pretty remarkable innovations, but that wasn’t even the best part after all. What ended up happening is that I found parts and pieces of new innovations, by combining some of what I found with my own works in progress, or stimulating whole new directions to pursue. In the course of the search, I found that several of my earlier innovations had already been anticipated, most of which I had already given up on for various reasons fortunately (they were either too expensive or complicated, or both)
I think my patent application came out very well as a result, given that my patent agent had checked my search very carefully and was well informed. He only found one other fairly recent patent, but it didn’t interfere with any of the contemplated claims at all. The proverbial ounce of prevention.
Michael ZallDecember 23, 2012 08:17 am
Worst idea in the world!. Do you think a venture capitalist is going to invest without a search? That’s the first thing I do if a client comes to me as an investor. How can an attorney come close to writing a good application without a search? Knowing what is out their allows you avoid the pitfalls (lack of patentability/infringement) and save the project. Not doing a search is like walking across a busy highway with your eyes closed.
patent leatherDecember 23, 2012 12:44 am
Gene, what do you think of the strategy of intentionally not doing a search? Once in a while I have a client that is already in deep in their invention (spent a lot of $ to develop it, has partners, perhaps even currently selling it) and they prefer not to do any search before we file a patent for some or all of the following reasons:
1) they are looking for venture capital and if a search finds a 102(b) reference then an attorney wouldn’t ethically be able to file their patent, thus they can’t be patent pending and thus the venture capitalists won’t be interested (and the client says they would still pursue the venture even if they can’t get a patent)
2) they are going to proceed with their invention/business plan at all costs and thus do not wish to know about any patents they might infringe (“ignorance is bliss”) so that they can’t be held for willful infringement– so they will worry about potential infringements later;
3) finding relevant art requires it to be cited at the USPTO which could cause a rejection (perhaps that examiner wouldn’t have found the best art), and the client prefers to get a patent that they can try to license to companies (even if it results in a weaker patent) because without an issued patent it is much more difficult to get a licensing deal;
4) the technology is very cutting edge and an extremely detailed patent application will be prepared covering all aspects of the system, so it is very unlikely that a 102(b) will be found on all details in the spec- thus they don’t want to spend the extra money/time on the search since when the first office action comes back we can see how to amend claims at that point
Like you, I always recommend a search. However, some clients (typically more patent-savvy clients including some large corporations) have prefered not to do one for one or more of the above reasons. What is your opinion on forgoing a search in some very limited circumstances?