Searching - Better Safe than Broke
Kurt O. Baumgartner - President,
The Devine Corporation
Do a search, don't do a search or maybe have a search
done. It costs too much to have a search done and
the economics of a search don't make having it done
worthwhile. But, the economics of not doing a search
could be more severe. Since most inventor's deal
with a patentability search, finding out if it is
already patented, remarks made by Curtis Harrington
(Inventor's Digest, Jan-Feb, 1998) are very important.
He states, on patentability searches, the cost will
be at least $1,000 and it is not profitable to incur
those costs considering the additional $2,900 in
filing costs. I feel that those comments are misleading
and his search cost figures are highly inflated.
What is the inventor to do? Who should they believe?
These are good questions with no real hard and fast
answers. Hopefully this article will aid inventors
in making the appropriate choices.
Most inventors do not have just a single idea. While
each idea is unique, it is only one of many that
the inventor produces. In fact, many inventors carry
notebooks with them to write down their ideas as
they occur. The truth is, most of these ideas never
get past the notebook stage and most of the ones
that do never get to the patent stage. This is why
it is important for inventors to know just what
they are getting into when they start the patent
Economics is the key. It costs money to patent an
invention. As stated in Harrington's article, the
filing cost of $2,900 is just the beginning of the
process and the costs. There are patent office and
attorney fees all along the process with a substantial
fee required when the patent office says it is going
to issue your patent. Failing to pay that fee means
no issuance and no patent. Then, at 32, 72 and 112
years, a maintenance fee is due or the patent expires.
A cost of $5000 for a utility patent from start
to finish, including attorney fees, is not unusual
and most often a fair approximation of the average
cost. With a first office rejection almost automatic
for every patent filed, to expend another $1,000
for a patent search would seem to be a little excessive.
If a rejection is going to occur anyway, why would
anyone waste time with a patent search?
obvious answer is that it is not a waste of time
or money. In order to write an application a patent
attorney must write acceptable claims concerning
the invention. Poorly written claims are one reason
for a first office rejection. Another is that the
claims are already covered by previous works of
art (patents-U.S. and foreign). If the attorney
has already read the previous works, claims can
be written that will not infringe on existing work
and reduce the chances of a first office rejection.
Writing claims without reviewing the prior patent
literature is almost guaranteeing a first office
prior art rejection. For the inventor, a prior art
search can mean saving time and effort. As mentioned,
inventors have many ideas, the one under patent
consideration may seem most promising. However,
if it looks like the patent literature, either US
or foreign, seems to cover the idea well, it may
not be worth the additional time and expense to
even try to file an application. A patent may get
issued eventually, but the claims will be so restricted
as to have little value. There is no reason to go
through the attorney fee and filing expense to have
the patent office indicate that there is nothing
to patent when that could have been determined prior
to filing. It makes more sense to concentrate on
those ideas, which have greater potential.
the prior art is not that difficult and does not
have to cost anywhere near the $1000 indicated by
Mr. Harrington. But, determining what needs to be
searched can be as important as how much or where
to look. The patent office is going to conduct its
own search of an invention. The office will search,
at a minimum, the US patent database that they maintain
and the foreign application/patent database compiled
by Derwent, Inc. In the case of some scientific
areas, they may search appropriate literature databases
to find previously published articles. The most
critical areas of prior art are US and foreign patents,
not the worldwide accumulation of knowledge mentioned
by Mr. Harrington. A good faith effort to search
this area of prior art then dealing with any items
found, in the application or in the information
disclosure statement, often reduces or eliminates
an examiner's prior art opposition to the application.
Examiners tend to look more favorably at applications
that have done an adequate prior art search.
how and where to do an adequate prior art search
is a problem for many inventors. Obviously, the
best place to perform a prior art search is at the
patent office. Not only the US patent office, but
at the patent office of every country in the world.
This, of course, is not practical. That is why online
databases and the Internet have become so popular.
But where and how to look can be time consuming,
confusing and costly. The following is a brief discussion
concerning where inventors can go to search and
why in some cases it is better to let an information
provider do the search for you.
Searching - US Patents
you live close to a patent repository library, you
can go to the government documents section of the
library and do a manual search using CASSIS. This
allows you to search the information provided in
the official patent gazette. CASSIS is limited in
its scope and ability to find relevant patents.
However, if you find relevant patents, copies should
be available right there on microfilm. The USPTO
can provide you with a list of repositories in the
US. This is a beginning.
may not find anything here. The next step is to
look online at either the USPTO Website (http://www.uspto.gov)
or the IBM Patent Website (http://www.ibm.patent.com).
Both of these sites allow you to search US patents
back to 1976. However, you can search only limited
parts of the patent: title, abstracts, inventors,
assignees and citations. Knowledge of Boolean logic
(And, Or, Not) and nesting is beneficial. The search
engines are not sophisticated and the tendency is
to get a large number of irrelevant records. Relevancy
is based upon how often a search word(s) appears
in one record in relation to the other records not
whether the patent is pertinent to your topic. A
great deal of time is spent looking at many patents
to find the few that deal with the actual topic.
If relevant records are found, the IBM site can
provide copies of the images (figures and drawings)
from the patents. For mechanical and design patents,
this can be very helpful in determining whether
the patent covers your invention. Beginning in 1999,
the USPTO has plans to make the fulltext of patents
searchable and include access to images. This is
as far as you can go searching US patents without
incurring some searching costs.
area of searching is much more difficult. The only
free site is the World Intellectual Property Office
or PCT office site (http://pctgazette.wipo.int/eng).
Most foreign applications are first filed with this
office. The inventor can indicate which foreign
countries, which belong to the Patent Cooperation
Treaty, they intend to file. While these are just
applications, the invention and claims are outlined.
This database only covers 1998 and again has limited
searchable fields. This does not cover foreign patent
applications not filed in the PCT office.
Based: US Patents Only
Miner: An Internet based (http://www.patentminer.com)
service that allows you to search twenty-five years
of US patents full text. It utilizes a basic search
engine typical of the Internet. While Boolean logic
is supportable, it is still a basic search format.
You can get patent copies from them, see the full
text of the document and hypertext over to the IBM
site to see the images. As with any Internet based
services, some days it is fast, some days slow and
some days you can't get to it at all. Fee: There
is a cost for this that ranges from $12.95 (single
concept search) to $49.95 (Unlimited searching for
a 12-hour period)
Intelligence: A non-Internet service that requires
special software, which allows you to connect directly
into their serve. They have US patents fulltext
back to 1945. They have a more sophisticated search
engine than the Internet providers. However, if
you wish to do a sophisticated search with nesting
and proximity, the search can get to be very complicated.
You can receive patent copies via e-mail or regular
mail at $3 each. However, retrieving a large number
of patents via e-mail can cause problems if your
system has limited space. A short patent can run
1 megabyte while a very long biotech patent can
be over 50 megabytes. Fee: The software costs and
you can pay as you search or sign up for a variety
of monthly pay plans.
and Foreign Patents
& STN: these are two different for fee services.
Both have US patents full text back to 1971 and
claims back to 1950. They also have a variety of
foreign patent databases such as the Derwent World
Patent Index and JAPIO (Japanese patents) among
others. They have very sophisticated search engines
which allow for great flexibility in Boolean logic
and proximity searching. While these are 'pay-as-you-use'
services, there is a nominal initial set-up or account
fee. However, there is no minimum usage and you
pay only for what you use. All information providers
discussed in the next and the USPTO will use one
or both of these services.
are a number of these services available. Some can
be found in the classified section of this magazine.
You can also contact your local inventor's group
or chamber of commerce as they may have names of
appropriate companies or individuals. Also, fellow
inventors may be able to recommend a service they
have used. The purpose of the information providers
is simple. For a fee, they will search the online
patent literature to see if the inventor's idea
has already been patented or for foreign countries,
applied for. This is a subject or term search using
the terms and concepts that best describe the invention.
If an appropriate class has been determined for
the invention, a search of that class can be made.
Some of these services will also perform a physical
search of the patent office files for patents similar
to the invention that date prior to the online databases.
Depending upon how detailed an inventor wants the
searcher to go, a search can run from $100 for US
only to $1000+ if a manual search is completed at
the patent office. Normally, a search of the online
US and foreign patent databases should run $200-$300.
This price varies due to how much is being searched,
what kind of results the client will receive, and
how large the search firm is (overhead costs). Costs
need to be discussed and fully understood with the
provider before a search is performed. Be prepared
to pay part or the entire search cost up front.
has been said that about spending $500 or $1000
to do a patent search when all that is going to
be covered is a small portion of the worldwide literature.
And any publication from that multitude of literature
can be declared prior art and prevent your patent
from being issued. That is true and because it is
true, an inventor could forego a patent search.
The inventor will still spend the $2,000-$3,000
for the attorney to prepare and submit a patent
application. Then, when the patent office rejects
the patent application, and it will, because it
found prior art, the attorney must argue that what
was found is not relevant and/or change the claims.
The result will be thousands more in attorney and
re-filing fees. If the application is dropped, the
inventor will loose most or all the their money.
The patent office keeps some or all of the application
fee. And unless there is an agreement with the attorney
to return his fees, none of that is returned. In
addition, it has taken the USPTO about a year to
provide that negative opinion. One year and a couple
thousand dollars down the drain. To spend $200-300
to find the obvious prior art patents and maybe
prevent spending the $2900, plus waste a year, seems
to be a very profitable trade-off. If nothing is
found or similar patents are found, the attorney
can 1) write claims to avoid obvious prior art problems
and 2) explain those away in the application so
that the examiner sees why they are not relevant.
A much better initial application should result.
If patents are found that are right on target of
the invention, the invention is dropped there and
then. The result is minimal costs and time. While
a patent search will not guarantee clear sailing
and no rejection, it will increase chances of getting
through a first office action without a prior art
rejection. I believe that is money and time well