How to Do a Patent Search
As an inventor, one of your first thoughts when you come up with the Mother of All Ideas is probably, Has someone else already done this? The only way to know for sure if you’re the first is through a patent search. The search will tell you if your idea has been patented already and, if so, whether the patent is still in force. Here’s how you do it.
Patent AttorneyDirected Search
Going through a lawyer to search patents will cost the least amount of time and the most money. Patent attorneys employ professional researchers. You hire the attorney, and the attorney gets someone to conduct the search. Then the attorney adds a mark-up to the search bill, sometimes as much as several hundred percent. Many lawyers cloak this in the term handling fee. To save this extra expense, some inventors hire their own researcher or do the search themselves.
Most patent attorneys don’t render an opinion based on a search conducted by anyone other than their own searcher. However, you can tell a lawyer that if they won’t accept the work of your search firm, or searches done by yourself, you will go elsewhere where such work would be acceptable. If you’re paying the bills, and you’re willing to take the risk, the lawyer shouldn’t have a problem.
Now, if the search results show no prior art in my field of invention, you don’t need an attorney to tell me the coast is clear. Conversely, if a search reveals prior art that’s spot on your invention, you don’t need an attorney to tell me my idea has been done before. You might, on the other hand, hire an attorney to help end-run an existing patent through the use of language in the application.
If you hire a lawyer, get a quote in advance. The fee will be based on how all-encompassing you want the search to be.
Direct-Hire Professional Search
If you want to save lawyer fees and mark-ups, consider going directly to a patent search firm. Searchers are best found through inventor grapevines, inventor associations, or university intellectual property departments. In larger cities, you can also check the Yellow Pages under “patent searchers.” But be careful not to fall into a trap set by some disreputable invention marketing organizations. They list themselves in the phone book under “patent searchers” with a toll-free number. This is another way they hook unsuspecting inventors into service contracts. Get all the facts up front.
Some reputable searchers ask for money up front if they don’t know you. This is understandable. Just be sure you get the cost of the search beforehand, and getand checkreferences.
Ask for a rate sheet and then get on the phone and discuss the exact services you need. Costs vary depending on the complexity of the search. Electronic, chemical, biological, botanical, and medical searches are often more expensive than a mechanical search. In most cases, there will be incidental charges for copies, phone and fax, online fees, and shipping and handling of your materials. This is all standard.
Most important, ask if the searcher is experienced in your field of invention. If you’re searching a chemical patent, don’t hire someone skilled in mechanical devices.
Unless you have a history with a search firm, ask for a letter of nondisclosure before you sign on.
The cost to search a utility patent in the Washington, D.C., area runs between $500 and $1,000. It is roughly $100 per hour for a competent search. Once the search has been completed, if you want to obtain an opinion on the patentability of your invention, add the cost of your lawyer. If you need to show a prospective licensee that your invention has a good shot at a patent or that it’s unlikely to infringe on an existing product, a letter from competent patent counsel may do the trick.
The Do-It-Yourself Patent Search
If you decide to do the patent search yourself, you have several search methods available:
The USPTO (United States Patent Trade Office) Public Search Facility. The USPTO operates a Patent Public Search Facility located in Alexandria, Virginia. Here every U.S. patent granted since 1790 may be searched and examined. Many inventors like to make at least one pilgrimage to the Patent Public Search Facility. It’s located fewer than 15 minutes from National Airport by taxi; Metro Rail serves it off the Blue and Yellow lines, King Street Station; and several hotels are within walking distance, so it’s easy to get to and around.
Upon your arrival, the USPTO will issue you a SMART card ID badge. These badges are required to pass through security access checkpoints in the Public Search Facility. Badges are obtained from the USPTO Security Service Center in room 1C51 on the lobby level of the Madison Building at the Alexandria campus from 8 a.m. to 4:30 p.m. Visitors must present a valid photo ID to be issued an access badge. Double-check the hours of operation by calling toll-free 1-800-786-9199 or locally 571-272-3275. Depending on where in the facility you want to search, the Patent Public Search Facility is typically open from 8 a.m. to 8 p.m. It’s closed weekends and federal holidays.
Internet search. You can also conduct searches pro se. Go here and have at it. IBM also hosts a search site, and Google facilitates patent searching.
To search foreign patents, there is only one free site. It is run by the World Intellectual Property Office (WIPO). The site provides access to various intellectual property data collections hosted by the WIPO, including Madrid, PCT, and JOPAL (nonpatent reference) data. The WIPO also supports fully searchable information retrieval and display. Access to the Digital Library is available to the general public free of charge. The services are operational and are updated on a daily, weekly, and monthly basis, respectively.
Be aware that these databases are intended for use by the general public. Due to limitations of equipment and bandwidth, they’re not intended to be a source for bulk downloads of USPTO data. Bulk data can be purchased from the office at cost. The USPTO monitors who uses these databases. If someone generates an unusually high number of daily database accesses (e.g. searches, pages, or hits), whether generated manually or in an automated fashion, the USPTO may deny access to these servers without notice.
Hopefully after all of these searches you have found that your invention is the Mother of All Ideas and you can move forward. Good luck!
From The Complete Idiot’s Guide to Cashing In On Your Inventions, Second Edition, by Richard C. Levy
