Patent Search-
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-
Doing a thorough search and taking it into account when writing a patent application
is an investment-
* 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
- Not Just Patents will attempt to identify and analyze all prior art within the scope of the invention to address inevitable prior art issues during the patent application writing process rather than addressing them as office action responses when the scope of the application cannot no longer be changed and any changes are generally more expensive to make.
- A classified search of the US patents and published patent applications in the Class and subclass where the claimed invention is most likely to be classified in the current United States Patent Classification system (USPC) will be completed in an effort to identify the level of skill of a person of ordinary skill in the art (POSITA) and the state of prior art and to identify the last patents that have issued in that art.
- A patent search will also establish the scope of the state of the art in the field for the Enabling Requirement of 35 U.S.C. 112 so that the application can be properly written to take the level of knowledge of a person of ordinary skill in the art (POSITA) into account. To meet the Enabling Requirement, a patent application specification must describe how to make and how to use the invention sufficiently so that someone who is skilled in the art could build the invention without undue experimentation. The state of the art existing at the filing date of the application is used to determine whether a particular disclosure is enabling as of the filing date.
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.
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