A patent is one of the most important aspects of intellectual property’s valuable intangible assets. This is especially true for those businesses that can sustain themselves by inventing and improving.
Patents are subject to multiple tests to ensure they are original, non-obvious, and not identical to any other invention or concept before filing. The patent office in the country grants a patent only after it meets all requirements hence the need for a patent search.
What is a Patent Search?
Patentability searches or patent searches are used to evaluate the patentability of an invention. Any patent office that you apply to, such as the USPTO, will reject your application if a patent has been granted for the same invention. It is possible to check if a similar patent has been granted. If you have the funds, professional help or patent search software are always the better options for more thorough results.
Why do a patent search?
Patents provide legal protection that protects your inventions from being used or monetized without your permission. A patent search is one way to prevent patent infringement. A patent search has many benefits beyond the obvious.
Avoid making costly investments: Understanding the patentability of your invention will help you make better decisions and avoid making unnecessary investments.
Please get familiar with the past art (prior art): Understanding prior art will help you understand its patentability and make writing unique claims and descriptions easier. Then, enhance your patent application and design: Innovators can gain knowledge and benefit from it when they can improve their patent applications or create a design around the invention.
Types of Patent Searches
Comprehensive patent searches are a great way to uncover insight to help you and your company stand out in the industry. Different patent searches are necessary as your inventions and organization move through the innovation process. While many patent searches are similar, their purposes may be different.
1. Novelty or Patentability Search
The most requested search is the Novelty Search. This type of search and opinion is used to assess the probability of obtaining a patent through the US Patent and Trademark Office (USPTO). It is about whether the invention is patentable by the USPTO. However, it does ask if the invention has infringed any other patents in real life. Startups and inventors often request a novelty search with new inventions to determine whether their invention is patentable. The search can also yield valuable information for inventors, such as competitors in the same area.
What are the steps in a Novelty Search? The inventor must first clearly identify the invention. Next, they must list all elements and key aspects that they consider novel. Next, the inventor must identify and list all the key aspects.
2. Freedom to Operate Search
A Freedom to Operate search (sometimes called a Clearance) determines whether product commercialization is prudent in light of in-force patents. The FTO search will determine whether the inventor can use and commercialize his invention without fear of being sued for infringement.
FTO searches and opinions are focused on the claim section of in-force patents rather than the disclosure of prior art, as in a novelty or search. As a result, FTO searches are more complex, time-consuming, and expensive, often costing thousands. In addition, FTO searches are designed to verify that the proposed invention is not infringing upon any patents. If they do, the inventor can stop commercialization, rework the invention, or approach the patent holder about licensing negotiations.
3. Non-infringement Opinion
A non-infringement opinion similar to the FTO search determines whether the inventor’s invention will infringe any particular patent. Non-infringement opinions can only be directed at a particular patent or patents already been identified. A non-infringement opinion follows the same steps as the FTO search, except that the patent at issue is already identified. Like the FTO opinion, the independent patent claims must be deconstructed, analyzed, and compared to the proposed invention.
It is important to conduct FTO and non-infringement opinions before any allegation or commencement of the lawsuit. If a licensed patent attorney performs the search and opinion (preferably written), it may serve an exculpatory purpose if the inventor is sued for patent infringement.
4. Validity Search
There are a few situations where validity searches can be conducted. This is usually requested by potential defendants or defendants in actual patent infringement lawsuits that seek to invalidate patentees’ patents to defend against patent infringement. It is used to determine if the patent being sought is valid and enforceable. A validity search and opinion can be used in other cases to assess the strength of certain patents before buying them or licensing them. If the patent in question is invalidated or unavailable, the patent’s purchase or licensing can be avoided. Finally, to evaluate the IP portfolio of a target business, a valid opinion can be used to do due diligence before a merger or acquisition.
Where to Conduct Patent Search?
Online databases: The USPTO has made online searching of its databases available to the public at no charge at http://www.uspto.gov. Other free online search options include CASSIS (a CDROM-based search engine), Delphion Research Intellectual Property Network (formerly IBM patent site), and the Source Translation and Optimization Internet Patent Search System (STO).
The USPTO’s Crystal City Public Search Room, Virginia: This is your local patent depository library. It describes the US Patent and Trademark Depository Library Program and lists the names and locations for patent depository libraries in each state. Unfortunately, not all patent depository libraries have a complete record of USPTO data. An accredited patent practitioner or professional organization: The USPTO registers patent attorneys and agents who meet certain legal, technical, and ethics qualifications. The USPTO does not have any control over the activities of patent professionals or organizations. Reputable search firms will use the same advertising methods as those who are less ethical. It’s a smart idea to check the reputation of any invention promotion company.
How to Search For Existing Patents
The internet has revolutionized nearly every aspect of life for human endeavor. You can perform everything, from diagnosing your medical condition to researching your family history while still wearing your underwear. In addition, entrepreneurs can do virtually all their business activities online.
The internet can help you save time and money when you launch a new business. It provides information that is not available elsewhere. An example of this is the inventor who has an idea for a product that will make millions.
Both novice inventors and experienced inventors can use the internet to help them overcome potential obstacles before they become too costly. Is there a similar or identical idea that someone else has already created? A patent search in the U.S. will give you the answer. Patent Office online or in person.
To determine if your invention has been patentable, a patentability search involves looking at published patents related to it. Similar inventions can also be viewed, which allows you to refine and improve your invention without infringing another’s patent. As a result, you don’t have to spend thousands of dollars and hours on an idea you can’t patent.
Online access to U.S. Patent Applications is also possible. Start at uspto.gov/patft. Next, click on Tools for Help Searching by Patent Classification under the heading Related USPTO Services. Now you can start searching. You can also search patents at google.com/patents or many other free sites.
Although internet patent searching can be a useful tool, your knowledge and the content of certain databases may limit its effectiveness. Therefore, after your idea has passed the preliminary patent search, it is worth hiring a professional to search for patents. Although it is more expensive, some are licensed by the USPTO to practice.
Strategy to Conduct a Patent Search
It is recommended to conduct a patent search to identify potential prior art (e.g., patents or applications) that could impact your invention’s patentability. However, the search process can be complex and time-consuming in many cases. Therefore, it is best to work with a skilled patent attorney. The following strategy steps are recommended to perform a patentability search:
1. Keyword brainstorming
If your patent search tool offers advanced search features like semantic search, you can start your patent search by selecting a relevant keyword. These features can help you identify your search intent and provide the best search results.
2. Use your keyword to find the appropriate CPC classification
Once you have determined the Cooperative Patent Classification (CPC) classification most relevant to your invention, you can search for similar patent documents.
3. You can search through both the patent documents of AppFT (published patent application) and PatFT (issued patents). The patent documents should contain the CPC classification you have previously identified.
You will need to search through both the Complete Patent Documents Database and the Published Patent Applications Database to conduct a US Patent Search using the USPTO. This will allow you to find the most similar patent documents to your invention. You will search for the relevant patent applications and issued patents using other online tools. In addition, advanced filters allow you to narrow down your search area for more specific results quickly.
4. You can dig deeper to find more relevant patents by using the citations in the prior art of the patents that are most relevant to your search.
After you have identified the most similar patent applications, issued patents, then you can expand your search by looking at their forward and backward references. You can get the best results by looking through the citations and the prior art layer-by-layer.
Many online search engines offer search options that reduce the time required to look through citations layer-by-layer. In addition, these tools and algorithms could prove to be more efficient and user-friendly than traditional patent searching methods.
5. Repeat the process to expand your search area and dig deeper.
To broaden your search, it is important to look into non-US patents and non-patent literature at other authoritative patent offices. It is also possible to find more information or similar information about a patent’s family by looking into it.
Patent search Cost
Professional Search Fees
There are many ways professional patent researchers can charge. If you need the researcher to review your information and give an opinion on the Patentability of your invention, this hourly fee is often applicable. The fees vary depending on the type of invention being researched and who is conducting the research.
You might only pay $100 for a simple invention if the service doesn’t provide analysis or opinion. On the other hand, you might pay $2,000 for more complicated inventions that require more research. The following are a few examples of what you could pay to hire an attorney.
- Simple inventions: $1,000 to $1250
- For slightly more complex inventions, $1,250 to $ 1,500
- For moderately complex inventions, $1,500 to $2,000
- For highly complex inventions and software, it costs $2,000 to $3,000
Government Search Fees
After submitting your application, the Patent Examiner assigned for your case will conduct a search related to your patent. For small entities, such as universities or small businesses, the fee for the search is $300. The fee for larger businesses is $600. For more information on government search fees, visit the USPTO Website.
Why is a Patent Search Important?
- It is possible to avoid investing time and effort in an invention that is already patented. You can avoid the lengthy and costly patent application process.
- Knowing what inventions are already in use will help you avoid infringing another company’s patent. You will therefore not face Freedom to Operate problems.
- You can learn from existing patents how to improve your invention or make it different.
- Learn about the inventions of your competitors and get ideas for who could be a good partner or investor.
- It is possible to discover that the patent of a competitor is invalid.
- Researching a patent can help you confirm its validity if you’re thinking of buying it.
- You will be able to identify technology trends within your industry. You might get some ideas for how to improve on existing inventions.
- It will be possible to assess the commercial potential for an invention. You’ll save money by not continuing to develop the invention if there are already similar inventions.
- You can search for expired patents and get access to those inventions free of charge.
- This information helps you determine the value of patents in your company.
You can opt not to conduct a patent search. However, this is not wise. Although the USPTO will search for similar patents if you submit a patent request, it is not as thorough as professional researchers would. Even if you are granted a patent, another person or company can conduct research that renders your patent invalid. You can feel more confident in submitting your patent application to USPTO once you have received the results from a patent search.