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Do I really need a patent search?

Mar 13, 2017

Many clients come to me stoked about a new product they’ve created. Their enthusiasm is contagious, I must admit, and this is truly the best part of my practice. They’ve never seen it anywhere. They’ve done a search on Google and, perhaps the U.S. Patent & Trademark Office and found nothing like it. They are convinced it is patentable and want to apply.

Doing your own search is a great way to begin, absolutely. Google Patents has a reasonably up to date collection of published patents and patent applications, and can be searched by keyword. The PTO can definitely be searched by keyword, and also inventor name, company name and technology class. You certainly can’t beat the cost. But what might you miss?

Some patent attorneys and patent agents do their own searching in-house. There are also numerous independent, professional patent search companies for hire. Some are in the United States, and others are based overseas, like in India. These highly trained scientists, engineers, patent attorneys and patent agents search proprietary, subscription-only databases such as PatBase and PatSeer. These contain global patent information not available in Google. Patent searchers search alternate technical keywords that a layperson might not know, for example “alpha tocopherol” for vitamin E. They use Boolean operators, sophisticated search strings, and truncation operators to limit or expand the scope. Would you know how to do this? Do you have the time?

Most patent search firms will provide a confidential and free estimate. You should expect to pay at least $600 for a meaningful baseline patentability search, more in a newer or more crowded area of technology. No patent search is perfect, but a more thorough search, which typically costs more money, does give you more certainty.

A patentability search by itself will give you a bare bones list of patent or non-patent references that are similar to your concept—it will not tell you whether your idea is patentable. For that, you will need to take your search to a qualified patent attorney or patent agent for an opinion letter. He or she will interpret your results and recommend for you whether it makes business sense to apply for a patent, and if so, what kind of patent. This is something you might not be able to determine on your own. The patent attorney will also be able to advise you on how crowded and competitive this field is, which is also important to know. You may not be the first person to invent this, or have the most financial backing. If together you determine your idea is patentable, the search will help your patent attorney identify the most patentable features and write a tighter application.

You should budget anywhere from $1000 and up for a patentability opinion letter, depending on the technology and depending on how many references the attorney. Many patent attorneys will customize a search and opinion that works within your budget. You may spend $1600 on a patent search and opinion and find out your idea has been done. That is still $1600 well spent. You might have otherwise spent thousands of dollars on a patent application, and even more money promoting, developing and manufacturing a product you could not claim as your own.

Post Categories: Patent Search | Patents

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Contact Lesley A. Wallerstein, Esq.

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