Patent Searching (part 1) – top 5 misconceptions

One of the most common client questions is whether to perform a patent search prior to filing a patent.  As with all legal questions, it depends on multiple variables and is most likely more complicated than expected.

 

patentsearchUS patent office search

Google patent search

International patent search

 
 

Top 5 misconceptions about patent searching:

1) A patent search which fails to identify my exact technology will guarantee obtaining an issued patent.

A patent search can only reduce the risk of a patent application failing to obtain issuance.  A patent application can be rejected as an obvious combination of existing technology.  However, almost all patents are based in part on previously existing technology.

2) A patent search is “included” with preparing and filing a patent application.

The process of preparing and filing a patent application is directed at preparing a complex technical and legal document that meets the technical disclosure requirements and strategically maps out the technology.

3) A patent search only needs to be conducted in the United States since I only plan to file a patent in the United States.

One of the requirements to obtain a patent is that the underlying concept/technology must be new.  The term “new” refers to all technology and knowledge and therefore even if the concept to be patented is disclosed in British magazine or a South African patent, it is still existing and thereby not new.

4) A patent search can easily identify all relevant patents and pending applications.

Patent searching uses strategies that include key word searching to identify relevant technology based on an inventors description of their concept.  However, if an existing patent uses dramatically different terminology, it is unlikely an existing patent would be identified with general key word search.  Professional patent searching includes other techniques such as classification and family searching to increase the accuracy of identifying all relevant patents.

5) A patent search can identify recently filed patents.

Most patent applications filed within the last 18 months are kept confidential by the US patent office.  Therefore, regardless of how much patent searching is performed, it is always possible that someone filed a patent on the exact same concept a month earlier.