Thinking of patenting your big idea? Unfortunately, it’s not quite as simple as filing some paperwork and shouting to the world you’ve had a big idea. Before you can make your invention a reality and take it to market, you need to conduct a patent search to confirm that no one else has already protected your idea.
But what should you look for in a patent search?
Unfortunately, that’s a more complicated question than most founders realize. Here’s a look at what happens in a patent search and, by proxy, what you should look for in a patent search.
Why Conduct a Patent Search?
The first step in patenting an idea is not drawing up the paperwork and paying the fees. The ideal first step is making sure no one else has already patented the innovation you’re working on, and the single best way to do that is through a patent search.
Think of a patent search as dotting your i’s and crossing your t’s before taking your invention to market. If someone else has already patented a similar creation, you’ll face an uphill battle to get yours patented, never mind the legal challenges likely to ensue from pursuing a patent similar to someone else’s. A patent search can help you avoid the headache of later legal trouble in advance.
The Requirements for a Patent
According to the U.S. Patent and Trademark Office (USPTO), an invention must meet the following requirements in order to qualify for a patent:
- The invention must be new
- The invention must be useful
- The invention must be non-obvious
The USPTO further states that the invention must cover subject matter defined by Congress as patentable, i.e., any new or useful machine, process, manufacture, or composition of matter. Machines and processes are patentable, but laws of nature (like gravity and mathematical formulas) are not.
The “usefulness” or “utility” requirement applies exclusively to utility patents (patents for new or improved machines, products, or processes, the most difficult patent to achieve).
While the “non-obvious” requirement may sound confusing, it actually goes hand-in-hand with the “new” requirement. Basically, your invention must be something completely novel and original, not a logical extension of a pre-existing machine, product, or process.
Here’s the problem: while you might be able to make sense of some of these requirements just by looking at your invention, there are others you won’t be able to clarify without a patent search. And if your invention can’t clear the patentability requirements, you won’t get a patent.
4 Types of Patent Searches
There are four main types of patent search an innovator may conduct:
- Patentability search: Sometimes called a novelty search, a patentability search is typically conducted before filing a patent to ensure the invention is new. This is the search you would conduct to ensure no one else has already filed a patent for your big idea. If someone has already filed a similar patent for your idea, a patentability search gives you an opportunity to refine your invention and better your odds of winning a patent.
- Freedom-to-operate search: That said, acquiring a patent does not implicitly mean you have the right to operate, a fact many inventors forget. That’s where a freedom-to-operate search comes in. Freedom to operate refers to your ability to sell your product without infringing on someone else’s patent. A freedom-to-operate search is a due diligence process ensuring you won’t infringe on someone else’s patent, and as a consequence won’t run into issues bringing your product to market.
- Patent invalidity search: If someone already has a patent for your invention or holds a patent that might infringe on your ability to go to market, a patent invalidity search comes into play. This search identifies references who can challenge or enforceability of an existing patent. It also helps identify how vulnerable your own patent is to such validity and enforceability challenges in the future.
- State of the art search: Then there’s a state of the art search, which encompasses a much broader scope than the other three. Patent searches are typically short-sighted in that they’re concerned primarily with a product’s novelty or the existence of similar patents. A state of the art search performs a comprehensive review of patent and non-patent literature to better understand the state of play in your field for a future market advantage.
How to Conduct an Informal Patent Search
Here’s the good news: many basic patent searches can be performed online with relatively little effort or cost.
For example, you can search issued patent or published patent application texts or claims for free on the USPTO website. This allows you to see existing U.S. patents as far back as 1976 and existing patent applications as far back as March 2001 (when applications were first published for the public). You can also make bibliographic searches, such as the name, invention title, and patent number for patents from 1790 to the present day.
And once you’re done, you can easily download, view, and print images of any patent before 1976 on the USPTO website. This offers a fantastic baseline to start your patent search.
Then, with the power of the internet, you can repeat the process at the World Intellectual Property Organization to search in a database that covers 93 million patent publications.
While you’re at it, be sure to do a quick internet search to see whether there are non-patent publications related to your innovation.
Word to the Wise
A word of warning: performing even an informal patent search can lead to legal complications in the future. For instance, the USPTO imposes a Duty of Disclosure for anyone involved with a patent application (i.e., inventors, patent counsel, even the entity that owns the invention) to disclose to the patent office any information that may be relevant to the examination of a patent application.
As an example, if in your informal patent search you come across an obscure blog post that discusses an idea similar to yours, you are legally obligated to cite that reference to the USPTO along with your patent application. Failing to disclose a known, relevant publication can lead to invalidation of your future issued patent, rendering your IP investment worthless.
One way to avoid potential issues is to keep a good record of the search terms and the search results. That way, you’ll have a clear record of what results you found and when.
Another way to avoid liability while still finding relevant information is to outsource the search. There are off-shore companies that will generate a huge list of references that pop up for specific keywords (it’ll still be up to you to wade through the huge list) for less than $1,000, or IP professionals that provide a more user-friendly analysis on your behalf for a bit more money.
Still another way is to not do a patent search at all.
Lots of companies, large and small, have internal policies that prohibit their technical staff from even looking at patents, in order to isolate their technical innovations from external influence. The assumption here is that, if you are an expert in the field, you should already be generally aware of competing technologies without having to wade through a mountain of patent publications.
No one ever said that being an entrepreneur was easy. But IP shouldn’t be another headache. That’s where we can help, guiding entrepreneurs just like you through every step of the innovation process. Contact us to get started.
