Q: Canít every patent be "written around",
so isnít a patent search just a waste of money
A: Although this statement is too broad in my opinion,
there is some truth to it. A good patent attorney is very likely
to get you some patent protection for your invention if there is
any patentable subject matter to your invention, but it may not
be commercially significant. Just having a patent on something
does not mean that it is valuable. There are many patents that
never lead to any product being sold in the market. If your goal
is just to have a patent, then you could reasonably skip the
patent search and respond to the office actions when they come.
Q: Does a patent search guarantee that I have a
A: No, absolutely not. There is no way to guarantee
that the patent office will conclude the same thing that your
patent attorney or agent will conclude. Any company that would
"guarantee" you a patent is not being honest. Although
as stated above, it is often possible to get a patent even when
there is a patent close to your invention, it is never possible
to guarantee a patent will issue.
Q: If you canít guarantee a patent, isnít a search
just a waste of time and money, wonít the patent office
perform a search anyway?
A: Again, the answer to this question is yes and no.
It is true that if you file a patent application
(non-provisional) the patent examiner will perform a search to
see if your invention is patentable, however, you may have
invested a lot of time, effort and money into your endeavor
before learning of the potentially damaging search results. It
can be very expensive to respond to office actions and to file
continuing applications, etc. The pre-filing patent search can
give you warning of the dangers ahead in obtaining patent
protection and let you decide if you even want to pursue it.
Q: What if I am in a real hurry and donít want to
waste the time?
A: There is no requirement to do a pre-filing search
so if you are facing a real time pressure situation (i.e. time
bar approaching etc.) then by all means, file without the
Q: Canít I do the search myself and save some money?
A: Yes, of course you can. Many inventor societies
have wonderful resources to help inventors do there own
searches. An internet search for resources should turn up some
good search tips. The United States Patent Office also has some
fairly easy to use resources for inventors along with tips on
how to use them. Of course, unless you are experienced in the
patent search field, your results will not be as comprehensive
as a professional search, but it might give you an idea if your
invention is worth pursuing.
The decision to have a pre-filing search is not an easy one
unless money is not really an issue. Overall, I recommend a
patent search, but there are situations as noted above where it
makes sense to proceed without one. Many patent professionals
offer a free consultation and you could bring up the search
question with him or her at that time to get a personalized
opinion based on your particular situation.
Mark David Torche
Patwrite (866) 42-IPLAW (866-424-7529)