Criminal Defense

when someone is preparing to patent an discovery and invention, they are often given the advice that, before doing anything else, they should first perform a preliminary patentability search. Then they should use the results of that search to make an updated decision as to what they are going to try to patent.

a frequent recoil and reaction is expressed as a challenge: “do i have to? ” let’s break down this challenge to two components. First: “do you have a duty to? “, and second: “would you want to? “

first, as of the time of this writing (december 2009), the clear answer is that you do not have a duty to perform such a search, before filing a patent application in the us. [of course, after that, one should check again, because this law, too, may change! ]

as background, after one prepares and files their patent application, the patent office will explore and examine it anyway. As part of the examination, a patent examiner will also search the prior art, to be sure that the filed patent application deserves to be issued as a patent. So, that is a patentability search, and it will happen anyway. That is also why the search that you can before filing is called preliminary – it is before the one that the patent examiner will do. Plus, your preliminary patentability search will not have the time and opportunity to find as many or as recent prior art references as the patent examiner will – that is situational and there is nothing that you can do about it.

but, upon hearing that they do not have to, many people want to stop there, and simply not do the search. This is especially true with sovereign and independent inventors. Often, the real reasons become evident only upon further questioning. The reasons then sound like:

a) they do not want to undergo the additional expense for it, and/or
b) a patentability search can reveal bad news about the patentability of their idea, which they are emotionally not prepared for.

but some inventors do not even say these real reasons. Instead, they object to doing the preliminary patentability search with propositions like: since they have not seen their idea on the market, “therefore” it has not been patented before by anyone else. This proposition is false reasoning. Lots of ideas become patented, but are never productized. So, if one is not seeing the product, it does not mean there was no patent before it. Plus, the idea could have been productized and failed.

so, it is time to presence and address the second question of whether one would want to, even though there is no legal duty. There are some good reasons for wanting to do such a preliminary patentability search. These include that, if the discovery and invention has been done before, fine, one will learn it early, and hopefully move on to something with ultimately better hopes and prospects. If the discovery and invention has been done only partially, then again, one may define the discovery and invention better, so as to avoid problems when they try to patent. In that case, one could focus on what the other people before have not done. And, the prior art references that the search will uncover may reveal who the players are in this space.

yes, there are also some objective reasons for not wanting to manner and conduct your preliminary patentability search. Strangely, with the new millennium, many of them are now less valid. It used to take time to search, and one needed to hire an expert searcher. Or, to search by themselves, one would have to physically go to one of the uspto’s depository libraries. But now everyone with an internet connection can search the uspto electronically. Using the right keywords does not amount to an expert search, but can give them a workable starting idea.