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Patent Searching

Often the first question that an inventor has is, Can I get a patent for my idea? There are certain technical requirements for an idea to be patentable. However, a patent agent should be able to tell almost immediately upon having the idea explained to them, whether it is the type of idea that may be patentable or not. However, aside from being the proper type of idea, the idea must be new in order to be patentable. This article is directed to how one goes about determining whether an idea is new.

Patents Protect New Ideas

The first place to begin looking is in the marketplace. Inventors can do a fair bit of their own research determining whether or not the product that they wish to make and sell already exists in the marketplace. Often, especially with the Internet, inventors can determine whether such a product is available for sale.

Once this basic research has been completed, the next step is to discuss the idea with a patent lawyer or patent agent. The purpose of the discussion is to arrange to have a search performed which will search the prior patent literature to see if anyone else has come up with the same, or a closely similar idea, in the past. Although many patent applications are filed, not all patents turn into commercial products. Therefore, the patent literature is often a rich source of prior ideas which are written down and carefully explained in the form of patents.

How Do New Ideas Get Searched?

There are essentially only two ways of conducting searches of patent literature. The first way is via electronic databases. There are a number of electronic databases available, and they include abstracted information from patent records of many different countries. However, the abstracts are only current as of the late 1970's and, the computer program that searches the abstract is based on a key word search. Unfortunately, many prior patents of interest in many fields date back earlier than 1970's. Additionally, under patent law, the inventor gets to be his own lexicographer. This simply means he can call parts of his invention by whatever names he so chooses. Thus, a key word search directed to a particular description of the product may not locate the most pertinent references, if the inventor has chosen slightly different terms to describe his product. Therefore, key word electronic searching is somewhat inexact.

Manual Searching

A further, and more detailed search is to conduct the search manually at the U.S. Patent Office. Your patent professional can engage the services of a professional searcher who specializes in the are of technology to which the invention relates. Many Canadian inventions are first searched at the U.S. Patent Office, where there is a large library of patents indexed according to subject matter. The U.S. Patent Office has more than five million prior patents on file, whereas the Canadian Patent Office has somewhat less than one and a half million Canadian patents indexed according to subject matter.

Another advantage of a manual search is that a human searcher can take advantage of the personal knowledge and skill of members of the U.S. Patent Office. Upon receiving a patent application, U.S. Patent Office passes the application to a classification officer. This is usually a senior examiner, who then assigns a category and subcategory within which to classify the invention. The classification officer can direct the searcher to the most likely class or subclass where such inventions might be stored. In this manner, the searcher can quickly focus in on the most likely classes for searching.

In addition, a human searcher is able to identify most relevant prior patents, even if the terms used in the prior patent are somewhat different. Thus, the quality of the search tends to be better. Therefore, while more expensive, it is often preferable to use a human searcher.

How Good Is a Patent Search?

Unfortunately, no search can be guaranteed. Unlike real estate searching, which allows the searcher to go back to the root of title, there is no root of title in patent searching. Hopefully, for the inventor, what will be discovered is that no one has ever come up with precisely the same idea before. However, because the search is based on identification of the key classes and subcategories within those classes to be searched, there is always the possibility that other patents exist classified differently which relate to the same or similar idea. Additionally, the only patents which are searchable are issued patents. There may well be pending secret applications which are not located in the search but could affect the ability of the inventor to get patent protection for his idea. However, in spite of these shortcomings, patent searching is usually advisable in order to obtain a general sense of the scope of protection that may be available for any inventor.

What Does a Search Reports Look Like?

A patent agent or patent lawyer will organize the search and receive the search results. The results typically consist of 5 to 15 patents directed to related ideas. The professional can then review them in order to determine which ones may be the closest prior patents and how such prior patents may affect the patentability of the invention which the inventor is interested in. This analysis is not easy and requires a detailed understanding of what kinds of differences patent examiners will accept as being patentable. Based on this preliminary patentability opinion, the inventor will then be able to determine whether or not the commercial protection offered by a patent is sufficient to justify the expense of preparing and filing patent applications.

If you have an idea and you wish to consider obtaining patent protection, you should contact a qualified patent agent or patent lawyer to assist you with obtaining the search results and interpreting them.

James Nenniger is a founding partner of the firm of Piasetzki Nenniger Kvas LLP, Barristers & Solicitors, Patent and Trademark Agents, a firm that restricts its practice to patents, copyrights, trademarks, industrial designs and related causes. Piasetzki Nenniger Kvas LLP is located in Toronto, Canada.