Patent Search-Attorney, Inventor, Search firm?
Recently, Entrepreneur.com published a short article on how to conduct a patent search. The author presented two options for inventors and innovators to “make sure your brilliant invention doesn’t already exist”. In the industry, this is called a patentability search. Protecting your unique and potentially lucrative idea from copycats and imitations that will cheapen the value of your invention is important, but it is also critical to do your due diligence and confirm that you are not replicating someone else’s unique invention and needlessly spending money on patenting.
The two options featured in the Entrepreneur article include hiring a patent attorney or independently conducting your own patent search.
Choosing to hire a patent attorney and letting a patent expert do the search will save you time and provide you with a valuable legal perspective. However, patent attorneys typically perform a search or outsource searches to a specialized patent search firm after reviewing the invention disclosure and drafting a set of claims. This results in the identification of prior art that is narrowly related to the specific claim language crafted by the attorney. Performing a narrow patentability search prescribed by an attorney does not empower inventors to think broadly beyond the scope of their initial invention which results in less valuable patents because it leaves unclaimed subject matter on the table.
Alternatively, depending on the technology area, many patent attorneys recommend performing no prior art search whatsoever. This approach harkens back to a time when patent applications were available in paper format accessible only at the USPTO or by mail. Without a prior art search, there is nothing to look at to frame a claim set (other than the invention) which often leads to very broadly filed claims. Attorneys will suggest that no matter what claims are filed, the patent examiner will narrow them; this “old-school” approach usually results in:
- less valuable patents because if the broad claims happen to grant they can be relatively easy to invalidate
- higher costs to the patentee because additional office actions (communications between the patent office and the attorney) are necessary to narrow the broadly filed claims
- a larger file history with additional arguments and counter-arguments to narrow the broad claims that may come back to haunt an applicant in the case of future litigation
For those with more limited funds, the Entrepreneur article suggests that inventors conduct their own patent searches. The benefit of conducting the search by yourself is that it’s quite inexpensive and more aligned with your goals in mind. There are numerous resources available – even a step by step infographic describing the process. However, with data scattered across various sources, it is tricky and time-consuming to conduct effective patent searches without missing anything. Furthermore, it is difficult for an inventor to construe the legal implications including the potential value of the patent or the potential coverage that granted patent claims might support in light of the prior art.
If you are an entrepreneur, inventor, or an innovation manager, we have a secret to share with you: There is a third option. Use a professional patent search firm. A patent search firm with knowledgable technical experts who are familiar with the legal process will conduct thorough, objective patent searches before the drafting of a set of claims. This more comprehensive approach often referred to as a patent landscape search, will uncover new areas to which the invention could be applied. This will in turn enable the inventor to broaden the disclosure and the claims to cover a greater breadth of products and product features while ensuring the claims are still patentable. This enhanced search will also allow for easier Track One prosecution (fast-tracking the patent’s examination) because of the breadth of the prior art that can be submitted to the examiner. The identification of additional key prior art combined with a technical assessment of what you can arguably protect in light of the prior art will result in more valuable and less expensive patents.
Hiring a patent search firm with a team of experienced, highly trained technical experts that understand the business, technical and legal implications of why you are doing the search is critical to assist you to get valuable patents granted.
Professional searching is both a science and an art, which is often outside of the domain of patent lawyers and beyond the scope of inventors trying to do it themselves. Hiring a professional patent search firm will provide you with objective and valuable insights at an affordable price.
Have any questions? contact us.