Patent Searching

Executive summary:

Patent searches are performed automatically by the patent office whenever a patent application is filed. The search is necessary because no patent will issue on an invention if the applicant was not the first person to make the invention. If the patent office discovers a patent containing the same invention as described in the application, or one that renders the applied for invention obvious, the patent application will be rejected. (See the BitLaw section on patent requirements for more information).

Since a patent application can cost from $3,000 to $20,000, it would be nice to know about any similar inventions before the application is drafted. This is accomplished through a patentability search, which is discussed below in the following sections:

Why search old patents for a new invention;
Searching firms;
Manual searches;
Internet searches; and
Attorney's patentability opinions.

Why search old patents:

Under U.S. law (35 U.S.C. 102), no patent will issue for an invention that was previously made by another. Nor will a patent issue if the applied for invention is only an obvious improvement over what already exists (35 U.S.C. 103). Thus, in order to determine whether an invention is patentable, it is necessary to know what has already been invented (known as the "prior art").

The prior art includes all previously issued patents, as well as technical documents, journal articles, and even non-written physical materials. Thus, a new bicycle could not be patented if the same bicycle had been sold in the 1950s, even if there had never been a patent filed on that bike.

Considering the vast scope of the prior art, it is impossible to know for sure whether an invention is truly patentable. However, because so many items have been patented it is often useful to examine old U.S. patents to see what else is out there. Very often, if a new invention has never been patented, it has never been made before and is elible for patent protection. Thus, many inventors will search prior patents extensively before spending any money on a patent application.

There are several caveats to the usefulness of patent searches. First, it must be remembered that patent applications are usually kept confidential until the patent issues. Even recent changes that allow for the publication of some patent applications before issuance do not change the fact that for at least eighteen months the application is kept confidential. Because these recent patent applications are not available for searching, a patent search will never reveal recently filed patent applications. Nonetheless, these secret patent applications would prevent anyone else from filing for patent protection on the same invention, unless they can prove they were the first to make that invention.

Second, one must remember that software and business methods were, until recently, considered unsuitable for patent protection. As a result, many improvements in these areas were never patented. While the existence of these improvements would still prevent a patent from issuing (or would invalidate an issued patent), it is impossible to find such improvements in a patent search.

Finally, an expert in a narrow area of technology may already have a detailed understanding about what everyone else is doing in that technology. For instance, an expert in superconductivity will probably know how all prior art superconductors operate. Conducting a patent search in this area would probably be less fruitful than simply asking the expert if the invention had ever been used before.

Searching firms:

Manual searches:

Internet searches:

Attorney opinions:

Thanks to the Internet, you no longer have to give up so easily. You can now do your own patent search in your spare time, with only a reasonable amount of effort. Even better, you can do it without spending more than a few dollars. If it turns out that your invention has never before been addressed in a patent, it may be that its time for a patent has come.

You can go online to find free access to patents issued since 1971. Both the U.S. Patent and Trademark Office (the governmental entity that issues patents) and IBM provide free online databases. By simply typing in words that describe your invention, called keywords, you can search the front page of every patent issued since 1971. (The PTO offers patents from January 1, 1976 to the present.) The front page includes the title of the invention and an abstract (a one-paragraph description of the invention), so if your keywords are good, you should turn up something if it's out there. You can also view the full text and drawings of any relevant patent that you discover from your front-page search. Therefore, if your idea involves technology that has arisen since 1971, you can perform a relatively thorough search this way.

More Searching

Perhaps searching online isn't convenient for you. Or perhaps your idea involves something that is timeless (yet another way to core an apple, maybe), which means you need to search for patents issued before 1971. If a patent has ever been issued for your idea, whether last year or last century, then you will be barred from receiving a patent on it, and you'll have to go on to your next idea. Because the online databases only go back to 1971, you'll need another way to search for patents issued before then.

A great resource for complete patent searching--from the first patent ever issued to the latest--is a network of special libraries called Patent and Trademark Depository Libraries (PTDLs). Every state has at least one; you can find the closest by visiting the PTO at http://www.uspto.gov/go/ptdl. These libraries are well stocked not only with patent materials, but also with reference librarians who will guide you through the patent search process.

The PTO maintains an up-to-date list of contact information for all PTDLs at http://www.uspto.gov/web/offices/ac/ido/ptdl/ptdllibm.htm. FREE ONLINE PATENT SEARCHING USPTO database: www.uspto.gov.

IBM Corporation Patent Search Site: http://patent.womplex.ibm.com.

Keep in mind that if you don't have Internet access at home or work, many public