Patent Searches Are Best Left to Experts
By Jack Lander
We search patents mainly to determine if our inventions have features that are novel, and therefore, probably are patentable. But we also must search to determine if any of our features that are not patentable are covered by another inventor’s patent that is currently in force.
For example: the year is 1883. You are a metallurgist who has invented an alloy that matches the thermal expansion rate of glass. You apply for a patent, and it is granted. You know that your invention has commercial value because Edison is using platinum for the lead-in wires in his incandescent lamps, and platinum is very expensive. No problem here. Edison states clearly in his 1880 patent for his lamp that “platinum only can be used because its expansion rate is nearly that of glass.” (See patent #223,898.)
Now suppose you discover the advantages of using a tungsten filament, which greatly increases the brilliance of the lamp as well as its useful life. But at the voltage standard Edison has already established for lamps, you’ve got to coil the tungsten wire in order to pack enough into the available space. You take your greatly improved incandescent lamp to an Edison would-be competitor, (let’s call it Ajax Lamp Company), and you propose a licensing agreement from which you will become wealthy. Ajax is salivating. It can’t wait to show up Edison, and capture the lighting industry. All is well until the Ajax lawyers discover that Edison holds the patent on the coiled filament, and Ajax can’t use your new filament material in coiled form unless it obtains a license from Edison. Ooops.
“But Edison isn’t coiling his filaments at all,” you say. “He’s using a flat filament.” That fact has no impact on the validity of his patent, you’re told. Your dreams of wealth have just crashed. Edison almost certainly will never grant a license on his coiled filament. It’s possible that Edison might even use your invention, and thumb his nose at your patent. Big corporations have been known to do that to us poor inventors.
The point here is that patent searching, and the forming of a patentability opinion is best left to an expert. We inventors get all excited when we do a Google search, and discover that “. . . there’s nothing like my invention out there.” Oh, really? Then I assume that you’ve also searched foreign patents, trade journals, university papers, and the walls of Tutankhamen’s pyramid for prior art. You see, any form of publication or revelation to the public constitutes prior art, and negates your claim as the inventor.
What I’ve said is true, but a good professional search today covers foreign patents as well as U. S. Furthermore, most foreign patents of consequence will be patented in the U. S. as well as their native country, and therefore will be discovered in your search.
I’ve done a lot of my own searching in the past, but I won’t rely on the results as the basis for filing my application. I order a professional search and opinion. The cost is small compared with the cost of a patent that is ultimately rejected by the Patent Office.
How about just getting your patent, and letting your licensee sort out the complications? Sometimes that works. But unless your patent is very valuable, like the tungsten filament, your prospective licensee may figure that going after another patent holder to obtain a license means paying two royalties, and it’s just too troublesome to bother with.
So, what’s the answer? Have fun doing a Google.com/patents search if you wish. But don’t file your patent application until you’ve had a professional search made, and received a written opinion. Some patent agents and patent attorneys prefer to phone you, and give you the news that you have a good chance of getting your patent, or not. Ask for this in writing. An ethical practitioner should be willing to go on record.
Now, there are three kinds of searches and opinions:
1) a basic search without an opinion;
2) a basic search with a simple “file or don’t-file” opinion;
3) a search with an in-depth analysis.
Professional searchers, unless they are licensed as agents or attorneys, cannot legally give a patentability opinion. Thus, there appears to be only a slight cost advantage to ordering a search on your own unless it comes with a legal opinion. You’re best bet is to have your patent attorney or patent agent order the search for you. The advantage is that the searcher will have a track record of reliability-worthwhile assurance.
Some searchers, such as Ron Brown, (Patent Search International), affiliate with an attorney. Ron provides the search, and the attorney provides the “file or don’t-file” legal opinion. Total cost: about $250. The attorney’s opinion is free. (I’m sure he hopes for your patent business.)
Some attorneys and agents prefer to charge a higher price, and write an in-depth analysis as of how competing patents will stack up against the essential claims that will be written in your application, if you file. They may also provide a disclosure of patents, if any, that you or your licensee will infringe if either of you hope to produce the complete invention. Cost: about $600 on up. If you do file, much of the in-depth work can be used in the patent, thus, some of its initial cost comes back to you as the reduced cost of your application.
For most of our inventions the basic search with a “file or don’t-file” opinion is probably good enough. But if your invention has exceptionally high commercial value, it’s better to order an in-depth search/opinion.
Whether you plan to license or produce and market, it’s vital to know the probabilities that your patent application will result in an issued patent, and also know about any complications because of other patents in force that will be necessary to license in order to produce the complete invention.
A last bit of advice: stay away from so-called “patenting services” that handle searches, patenting, and licensing. You’ll find them in the yellow pages and in classified ads. Many of them encourage you to file even though they know your patent probably will not issue, or if it does, it will be commercially worthless. They’ll likely farm out your patent to a (hopefully licensed) patent practitioner, whose name they don’t give you. And they’ll encourage you to let them handle licensing before the patent issues, a bad idea, charging you an inflated fee for their “complete” services.
For your patent, deal only with a licensed patent attorney or licensed patent agent whose name you learn and can check out, and whose only job is patents and related intellectual property. If your invention is mechanical, go to a practitioner whose technical degree is mechanical engineering. It it’s electronic, go to a practitioner whose technical degree is electrical engineering, etc. And if you order a search on your own, don’t deal with services that also offer licensing. In any event, never trust only your own search.
