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Inventors 101

This article presents an overview of the patent industry to help an inventor determine how to best decide on a course of action.

Is my invention worthy of a patent?

To answer this question, an individual inventor has three basic considerations to weigh:

1. Is my invention novel and unobvious so that I can pursue a patent? Keep in mind that the entire invention does not have to be novel and that you can pursue a patent for only a portion of the invention. Furthermore, the novel or unobvious combination of existing products can also be patented.

2. When I bring my invention to market, who is likely to try and stop me? Consider who may already have the rights to a similar patent or dominant technology and if they have the financial ability to prosecute.

3. How can I move from the paper stage to the prototype and actual production of the invention (including marketing)? In other words is your invention possible beyond the theoretical aspect? You do not have to be the facilitator of production but you should consider if production is even possible and / or practicable.

Here are some recommendations and information for your consideration:

It is noteworthy to state: patent searchers are unlicensed, unregulated and belong to no national organization of standards. With no body of standards the quality level can vary greatly between different searching firms.

1. A patent search should be considered an early investment into the pursuit of a patent. While most attorneys will order a patent search on your behalf, there is significant advantage in obtaining a quality patent search report independently. Having an independent quality patent search on hand will allow you to “shop” various attorneys for their opinion and their cost estimates prior to making a selection. Conversely, if you first approach an attorney, that attorney will most likely order a patent search. In this case you will probably be “locked into” that attorney and would be hindered from finding the best deal.

On the upside, approaching an attorney prior to requesting a patent search may help you isolate the features worth patenting while also addressing other legal matters that could potentially negate the patentability of your invention (i.e. prior public disclosure).

In summary, a patent search will generally be requested before the prosecution of a patent. Depending on the size and scope of your invention, a patent search may run from a few hundred to a few thousand dollars whereas an introductory visit with a lawyer will almost always be under one-thousand dollars. Consider the pros and cons above of ordering a patent search compared to having a lawyer do so on your behalf.

2. The foremost reason to obtain a patent search is to reduce your risk. Patent searchers are here to assist in reducing your risk by providing documents that help establish various boundaries: novelty, unobviousness, clearance (infringement) & etc. A patent search helps to identify the scope of what may be patentable. By showing the proper scope of a patent only those claims which have a chance of becoming accepted will be pursued.

3. Be sure that your patent searcher has no conflict in the sense that they are not in the business of providing prosecution (obtaining patents). Many law firms also provide patent searching services in-house. From an inventors point of view this should be considered a sign of caution. Does the law firm or patent agent have a vested interest in your costly pursuit of a patent?

4. Understand that searching is progressive. A patent search is simply a measure of how successful you may anticipate being on your quest to obtain a patent. A patent search will either discover “prior art” which will negate your invention or it will help establish a due diligence that no suitable “prior art” could be found. Be mindful that even if no “prior art” is found in a search, it means that at the given reasonable level of “expenditure and effort” no prior art could be found. A patent search does not guarantee that you will have no problem in the future; however it does provide a greater assurance that damaging prior art may not exist.

If your invention is found to be “not new” a patent search will help show you why it is found to be “not new.” You can use this information in one of two ways

  • a. Discover what areas are ripe for improvement so the next revision will have “inventiveness”
  • b. Decide the cost for improvement is too great and abandon future work on the project