In Lesson 7, we talked about identifying invention ideas that you may want to patent. Today, we’ll talk about one tool you can use to decide whether you actually want to go through the effort of filing a patent application.
Prior Art Can Keep You From Getting a Patent
When you have some ideas of what to patent, you may wonder if someone else has already discovered or created them. The stuff that is known before you file is called prior art. If they have been discovered and are already publicly known (before your filing date or priority date), you won’t be able to get a patent. Thus, you have the risk of filing a patent application only to have the patent office come back to you and tell you that you are too late!
To mitigate this risk, you can have a patent search performed. In its simplest form, a patent search is what you or an inventor can do by searching the Internet and patent databases (e.g., using Google Patents).
There are also professional searchers and whole companies that specialize in this service. They perform many searches and often use powerful search tools. Professional searchers may return a list of prior art references (e.g., patent applications, patents, web pages, white papers, or other published documents) that predate your filing date and that the searcher thinks are similar to one or more aspects of your invention.
Should I Have a Search Performed?
Searches can be very helpful and are often a good thing to do. However, they are not perfect and usually don’t catch all the references the patent office will cite against you. Generally, you can think about a patent search as giving you increased confidence that you have some aspects of your technology that have not been disclosed before. If you already have a high level of confidence that you have new features or techniques in your technology, then it is a perfectly valid decision not to do a patent search. For example, if you have been working within a very specific area of technology for a couple decades, it may be worthless to pay someone else to perform a search on your invention in that technology area.
Generally, you should at least have some sort of informal search done by individuals in your organization, whether this is a specific search session or the inventor’s general knowledge of the technical field. Whether or not you go forward with a search using a professional, it can be useful to tell your patent attorney of the most similar technologies or documents you know about. These can help your attorney draft the application in a way that distinguishes your innovations from those.
Other Types of Patent Searches
The type of search discussed above is generally called a patentability search. A patentability search is one that you do to discover if an idea is patentable. There are also other types of searches you may want to consider doing, but they are much less common and tend to be more complex and expensive. These other types include a freedom to operate search where you try to determine if your product infringes on somebody else’s patent and an invalidity search where you try to find references that will invalidate somebody else’s patent. These searches and their purposes are beyond the scope of these lessons.
Your filing date (also called a priority date) matters. A lot. Everything that is disclosed before your filing date can hurt your chances of getting a patent. A patent search can be a valuable but imperfect way to evaluate whether your invention is different enough from these prior existing technologies and documents to be patented.
Next time, we’ll discuss some of the things you may want to do after you obtain a patent!
Notice: This course and its lessons are not, nor are they intended to be, legal or other professional advice. Please seek the advice of a competent attorney or professional for your specific situation.
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