|< Back to FAQ I did a patent search and did not find my exact invention. Am I ready to file a patent application?|
|Q.||A “Quick” search on the USPTO’s website yielded no results that matched my invention. How important is it to have a professional patent search done before I file a patent application? Are there other searches I should be conducting?|
|A.||STOP! WAIT! WHOA!
A little learning is a dangerous thing; drink deep, or taste not the Pierian spring: there shallow draughts intoxicate the brain, and drinking largely sobers us again. –Alexander Pope (1688-1744) – An Essay on Criticism.
One of the challenges of the internet is that we can be lulled into a false sense of security, due to our assumptions and our eagerness to have a protected and profitable invention in the marketplace. When it’s your invention and your resources, you want to know that the outcome is favorable before you go investing your time, effort and money.
Don Kelly, past Patent Office executive, wrote a great article in the UIAUSA booklet, THE Inventor’s Resource Guide 2001, outlining the different levels of prior art searches: the word search, the classification search, the professional search and the examiner’s search.
Let’s say that you invented a better mousetrap, went to the U.S. Patent Office web site at uspto.gov and conducted a Quick search (also known as a word search) for “mousetrap” for just the title field of issued patents, you would get about 25 issued patents listed. Doing a Quick search on “mousetrap” for all fields would yield about 150 issued patents.
If you entered “mouse” and “trap” for just the Title field, you would get over 40 issued patents; for all fields – about 3800 issued patents! Whoa! After examining all 3800, one would think that would constitute an exhaustive search.
But wait, there is more. What if the title and written specification did not use the word “mouse”, but used the word “rat”, “mice”, “rodent”, “vermin”, “animal”, or “pest” instead? (I am not making this up; these are from issued patents.)
All these different words for mouse remind me of Bubba reciting the different ways to prepare shrimp from the Forrest Gump movie: “Shrimp is the food of the sea – you can: Barbecue it, Boil it, Broil it, Bake it, Saute’ it, Shrimp Kabobs, Shrimp Creole, Shrimp Gumbo, Pan Fry, Deep Fry, Stir Fry, Pineapple Shrimp, Lemon Shrimp, Coconut Shrimp, Pepper Shrimp, Shrimp Soup, Shrimp Stew, Shrimp Salad, Shrimp and Potatoes, Shrimp Burgers, Shrimp Sandwich, That – that’s ’bout it.” So it is with “mouse trap”. You can have rat trap, rodent trap, pest trap, animal trap, vermin trap, trap for mice, bait station, lethal trapping device, baffled rodenticide box…; the list goes on and on.
Your Quick word search might miss issued patents if they do not contain the words you are entering; one of which might be an exact duplicate of your invention. To make matters worse, the Quick search only accesses patents from 1976 to the present. That means that if your improved mousetrap was patented prior to 1976, it is invisible to a Quick search – not good.
What to do? Ah, there is the trusty Advanced Search, using patent classifications. A patent classification search goes back to 1790. Once again, you go to the Patent Office Web site and scan the patent classifications. Here it is: 043 – Fishing, trapping, and vermin destroying. Let’s look there. Subclass 58 – Traps, looks possible. An Advanced Search on ccl/48/53 yields about 90 issued patents. Are we through? Not yet. Your improved mouse trap might also lurk in the following classifications: 43/60, 43/61, 43/62, 43/63, 43/66, 43/69, 43/71, 43/74, 43/81, 43/82, 43/83, 43/85, 43/98, 43/114, 43/124, 43/131.
Don’t forget the Design Patents. Classifications D22/18 and D11/119 may show prior art that disqualifies your invention. Then there are off-the-wall classifications, such as 206/466, that shows a mousetrap in a paper sack for convenient disposal.
Whew! You searched diligently in all these classifications. Are you finished? No. Don’t forget the published patent applications on the uspto.gov web site. These count as prior art also.
In addition, a thorough prior art search examines foreign patents and non-patent prior art, which are not findable on the uspto.gov web site. You will need to go to fee-based sites for these or engage a patent professional.
Finally, even if you did find all the relevant prior art, there is still the need for a patentability opinion from a Patent Agent or Patent Attorney. Each of the claims in the relevant prior art should be examined carefully. Knowing the boundaries of the prior art is essential information for crafting your claims.
Also, a patentability opinion should address if your invention is obvious in light of the combination of two or more of the prior art (a common reason for rejection by the Patent Office).
Filing a patent application without a professional search and a patentability opinion is akin to setting sail over the ocean without charts, GPS and a weather report.
Inventors Digest’s ninth commandment of Inventing says it best: “Do what you do well and hire pros to do the rest.” I recommend that you supplement your search with that of a professional.
Know before you go.
– From Ron Reardon, president of Patents & More, Inc., secretary of The Inventor Associates of Georgia, an inventor with seven patents pending, and a registered Patent Agent. He can be reached firstname.lastname@example.org.