Patent Search-New Invention

An invention must be ‘new’ to be patentable. Any published source of prior art that discloses an invention can make an invention unpatentable. “Prior art” refers to all that is already public knowledge in the areas of science and technology.

There is no requirement to do a patent search before submitting a USPTO patent application. (USPTO Accelerated Examinations and many foreign applications DO require pre-application patent searches.) The patent examiner will do a thorough search, however, and cite the findings in the form of rejections and objections to patentability. (See for information on how to do a quick patent search and why it is important to go beyond that quick search.)


Doing a thorough search and taking it into account when writing a patent application is an investment-a money and time saver. Having a professional do the search is wise because of the inherent problems that exist with patent searching, including:

*  Patent searches for new inventions are often done without the benefit of knowing the exact specifications of the invention (no written application yet) making it difficult to ascertain where the invention fits in its field and what its proximate function is;

*  The claims of the invention have not been written, therefore the scope of the future claims may not be known;

*  New inventions may use new terminology to describe a particular element of the design but only old terms can be searched;

*  Patents are full of vague and inconsistent terminology and sometimes use obsolete names and terms (especially older patents which are still considered prior art);

*  Patents before 1976 are not easily key word searchable but are still considered prior art;

*  Words have different meanings in different fields and industries and different languages.

Searching the scope of unknown claims is a difficult iterative process that may need to be continued throughout the process of writing the specification and claims take into account all references that are applicable.

Other reasons to search: Searching other companies’ intellectual property filings can reveal research and development plans of competitors within your industry for both marketing purposes and for potential patent blocking purposes. Patents can be also used to locate other business opportunities and to gain technical information including detailed explanations of how various inventions are made and used. See Idea to Conception for more information on Reasons to patent search.

Patent Search

What to Expect from A Not Just Patents Patent Search

However, no patent search or application can be perfect: there are patent applications that are not yet searchable at any given time because of the 18 month (or longer) delay between a new application and its publication and there may be other references that may not be uncovered under a time and budget constraint.

Note on Intellectual Property Right Strategy: Some patent applicants choose to forego patent application publication in order to preserve the secrecy of their invention until the patent issues for various strategic reasons. One strategy is to protect the technology and innovation of the invention for as long as possible in case the patent does not issue, keeping the invention as a trade secret  and keeping the competition from being alerted for a longer time. Publication before issue is required in the U.S. if foreign applications are going to be subsequently made but not otherwise. One opposite strategy is using publication (or even early publication) as an opportunity to give notice to potential infringers, see Patent Pending/Provisional Rights for more information.

Contact Not Just Patents  at 1-651-500-7590   for assistance in creating and protecting Intellectual Property Rights (IPR).

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PO Box 18716, Minneapolis, MN 55418  


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Securing the Right IP

Call 1-651-500-7590 or email for Responses to Office Actions; File or Defend an Opposition or Cancellation; Trademark Searches and Applications; Send or Respond to Cease and Desist Letters.

For more information from Not Just Patents, see our other sites:      

Steps to a Patent    How to Patent An Invention

Should I Get A Trademark or Patent?

Trademark e Search    Strong Trademark     Enforcing Trade Names

Common Law Trademarks  Trademark Goodwill   Abandoned Trademarks

Patentability Evaluation

Chart of Patent vs. Trade Secret

Patent or Trademark Assignments

Trademark Disclaimers   Trademark Dilution     TSDR Status Descriptors

Oppose or Cancel? Examples of Disclaimers  Business Name Cease and Desist

Sample Patent, Trademark & Copyright Inventory Forms

Verify a Trademark  Be First To File    How to Trademark Search

Are You a Content Provider-How to Pick an ID  Specimens: webpages

How to Keep A Trade Secret

State & Federal Trade Secret Laws

Using Slogans (Taglines), Model Numbers as Trademarks

Which format? When Should I  Use Standard Characters?

Shop Rights  What is a Small or Micro Entity?

Patent Drawings

Opposition Pleadings    UDRP Elements    

Oppositions-The Underdog

How To Answer A Trademark Cease and Desist Letter

Converting Provisional to Nonprovisional Patent Application (or claiming benefit of)

Trademark Refusals    Does not Function as a Mark Refusals

How to Respond to Office Actions

What is a Compact Patent Prosecution?

Acceptable Specimen       Supplemental Register   $199 Statement of Use

How To Show Acquired Distinctiveness Under 2(f)

Patent search-New invention

Patent Search-Non-Obvious

Trademark Attorney for Overcoming Office Actions Functional Trademarks   How to Trademark     

What Does ‘Use in Commerce’ Mean?    

Grounds for Opposition & Cancellation     Cease and Desist Letter

Trademark Incontestability  TTAB Manual (TBMP)

Valid/Invalid Use of Trademarks     Trademark Searching

TTAB/TBMP Discovery Conferences & Stipulations

TBMP 113 Service of TTAB Documents  TBMP 309 Standing

Examples and General Rules for Likelihood of Confusion

USPTO Search Method for Likelihood of Confusion

Examples of Refusals for Likelihood of Confusion   DuPont Factors

What are Dead or Abandoned Trademarks?

 Can I Use An Abandoned Trademark?

Color as Trade Dress  3D Marks as Trade Dress  

Can I Abandon a Trademark During An Opposition?

Differences between TEAS and TEAS plus  

How do I Know If Someone Has Filed for An Extension of Time to Oppose?

Ornamental Refusal  Standard TTAB Protective Order

SCAM Letters Surname Refusal

What Does Published for Opposition Mean?

What to Discuss in the Discovery Conference

Descriptive Trademarks  

Likelihood of Confusion 2d

Acquired Distinctiveness  2(f) or 2(f) in part

Merely Descriptive Trademarks  

Merely Descriptive Refusals

ID of Goods and Services see also Headings (list) of International Trademark Classes

Register a Trademark-Step by Step  

Protect Business Goodwill Extension of Time to Oppose

Geographically Descriptive or Deceptive

Change of Address with the TTAB using ESTTA

Likelihood of confusion-Circuit Court tests

Pseudo Marks    How to Reply to Cease and Desist Letter

Not Just Patents Often Represents the Underdog

 Overcome Merely Descriptive Refusal   Overcome Likelihood Confusion

Protecting Trademark Rights (Common Law)

Steps in a Trademark Opposition Process   

Section 2(d) Refusals

Zombie Trademark  

What is the Difference between Principal & Supplemental Register?

Typical Brand Name Refusals  What is a Family of Marks? What If Someone Files An Opposition Against My Trademark?

How to Respond Office Actions  

DIY Overcoming Descriptive Refusals

Trademark Steps Trademark Registration Answers TESS  

Trademark Searching Using TESS  Trademark Search Tips

Trademark Clearance Search   DIY Trademark Strategies

Published for Opposition     What is Discoverable in a TTAB Proceeding?

Counterclaims and Affirmative Defenses

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