I love working with individual inventors. They are consistently enthusiastic about their inventions and believe they have invented the next best thing. That is why I often feel like the Grinch when I counsel them to invest in a patent search before plowing ahead with a patent application. I recommend patent searches not because I believe that their invention is not a flash of genius, but because I do not know what else has already been invented. And only a thorough patent search can start to answer that question.
What I often hear is, “I work in this field. I have looked everywhere, asked everybody, and you cannot buy this product anywhere.” Great! You have done market research and determined that there is a need for this product. That is the first step to developing a great business plan and forming a successful business. Unfortunately, many ideas that have been granted patent protection, or disclosed in patent applications, are never brought to market. Searching products available on the market is different than searching inventions disclosed in patent literature.
And this is why it matters. If your idea has been previously disclosed, you cannot obtain a patent on it. However, if you can improve an existing product, you may be able to get a patent on it. Because the patent application process can represent a significant investment of time and money, it pays to be fully informed before starting the process.
In performing a patent search, a patent professional searches the prior art related to your invention. In doing so, the patent professional can determine which, if any, elements in your invention have been previously disclosed. If there are non-trivial elements in your invention that have not been disclosed, you may be able to get a patent. If every element of your invention has been previously disclosed it may be impossible to get a patent, or the patent that you may be able to obtain would be so narrow that the value of the patent would be less than the cost of obtaining it. In either case, you now have new information to help you determine the best path for moving forward with a patent.
In the event that you receive favorable results from the patent search, you have now learned where the precise areas of novelty lay in your invention. The claims contained in the patent application can be directed to encompass these areas of novelty without encroaching into areas over which patent protection would be denied. This results in a patent that is as broad as possible. Additionally, by learning what exists in your art field, you have also learned what does not exist. This may enable you to design features that address an existing void in the art. By determining a need, you can design to fill the need and increase the value of a potential patent.
On the other hand, if a patent search shows that your invention is unpatentable, the patent search has saved you the thousands of dollars it would have cost to proceed with a patent application that would have ultimately resulted in the denial of a patent. And as a bonus, you now have a more comprehensive knowledge of what exists in the art field. You can use this knowledge to determine if there is another need in the art that you can create a patentable design to meet. Alternatively, you can examine the prior art to determine if you can make your invention without infringing on another patent. Or determine what existing patents you may wish to purchase to prevent others from competing with you.
Whether or not a patent search results in the decision to move forward with a patent application, the information gained by performing the search is well worth the relatively low cost of performing the search. Start searching, you will be happy you did.
Kelly G. Swartz is a patent attorney with Ingenuity Law in Melbourne, Florida.