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To Search Or Not To Search, Inventors Want To Know

In my many initial client consultation meetings, this is the first question: Should we do a search first? The short answer is yes, but not always. A patent search usually means searching the USPTO database to see if the invention has already been disclosed by another patent or patent application. If it has, there is no need to spend time and resources on drafting a patent application and paying hefty filing fees in order to find out that you were not the first to invent.

It is however important to realize that a search is not 100% guaranteed to find the relevant documents. There are several reasons for this. First, while a search will reveal the patents that have already issued, it will not reveal every patent application that also discloses the invention. The reason for this is the unavailability of certain patent applications to the public. First, it takes the patent office 18 months from the filing of a patent application to publish that application. Thus, a search will not reveal any applications that was filed more than 18 months prior to the search date and that is a pretty large window.

For example, if the search is being done on Jan 1, 2017, it will not reveal any applications that was filed after July 1, 2015. Second, not all applications will publish in 18 months. Some applicants request that their applications not be published until a final decision on patentability has been reached. This could take several years during which the application remains unpublished and thus outside the reach of a search. Third, there is no guarantee that all relevant publications will be found. The reason is that a patent attorney can be his own lexicographer, which means he may use terms to define the invention that are arcane or unanticipated.

Thus, no matter how clever of a searcher one might be, one may not capture every relevant document. Fourth, there is only a limited time that a searcher can spend on this process otherwise the cost will become prohibitive. Typically, the client wants to keep the cost under a $1000, which represents 2-3 hours of attorney time to search. There are over 9 million patents that have issued and you can only do so much with 2-3 hours of time.

Still, there is a good chance that highly relevant prior art will be unearthed during the search making the cost of the search a good investment. Spend a few hundred dollars on a basic search in order to possibly save a few thousand dollars in drafting an application which should have never been filed. Even if the search result is not conclusive, the information acquired by the patent attorney will help in drafting the patent application more effectively.

There is another major drawback to the search. You are required to report the result of the search to the patent office if you end up filing a patent application on the same invention. In fact, you and your attorney are required to disclose to the patent office every relevant prior art that you are aware of. Accordingly, in some circumstances, such as a manufacturer who regularly designs and produces new products may want to skip the search since they are already aware of the competitors and the products that are on the market.

So, if you are a first time inventor, consider the cost of the search as insurance premium. You may not need it, but it sure would be nice to have!

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