Patent Prior-Art Search

Is my invention or idea patentable?  This is usually an inventor’s first question.  There are certain preliminary patentability requirementsregarding the nature of the invention that you can have us quickly assess through our special free initial consultation offer.  However, in addition to being an acceptable type of invention, the invention must be novel with respect to relevant prior art. 

With over 6 million US patents, 40 million worldwide, and millions of printed publications,  which are all potential prior-art against your application, there is a good chance that some reference, or combination of references, may render your invention anticipated or obvious, and therefore unpatentable.  A prior-art patentability search can avoid loosing your investment in a patent application if the search discovers prior references that would likely preclude patenting your invention.

Moreover, in light of a seminal court decision referred to as “Festo” it is now practically mandatory to do an extensive prior-art patentability search to ensure that your patent will have maximal scope through an important legal mechanism known as the “Doctrine of Equivalence”.  In the worst case, Festo could reduce what would have otherwise been a broad patent to one that narrowly covers only your exact invention.  This would make your patent of minimal value because potential licensees would simply design around the narrowly interpreted claims.  Many patent attorneys still tell their clients it is OK to skip doing a prior-art search; however, under Festo you skip doing a prior-art search at your own risk.  Because, if there is any prior-art that the patent examiner finds, which requires your patent attorney to amend the claims around, you loose all equivalents related to the aspect he had to narrow.  If you expect to sell/license your invention or you ever plan to enforce your patent in court, you should have an extensive prior-art patentability search done.  The prior art found by such a search allows your patent practitioner to carefully craft the claims around the prior art, and more accurately decide what should be in the spec.  Under Festo, getting it right the first time (i.e., upon filing the application) is critical.  Many patent attorneys, particularly ones in the business for a long time, have not updated their patent practice, and may tell you an extensive prior-art search is not necessary, but do not believe it.

Another benefit of an extensive prior art search, if done well, is that patent examiners will often rely on the references you provide as the basis for their examination.  This tends to make the prosecution much cleaner and less costly, thereby resulting in a greater likelihood of a patent being awarded quickly, if not on the first office action.  Typically, some portion of what is spent for a quality patentability search can be recouped later by lower prosecution costs.

Considering the significant investment of time and money involved in a non-provisional patent application, a comprehensive patentability search and patentability opinion is a prudent upfront investment to safeguard your invention and conserve limited resources.

For at least the foregoing reasons, before having your patent application prepared we strongly urge you to do your own prior-art search as a starting point to seed a professional patentability search.  This will give us a more focused starting place, thereby significantly increasing the quality and comprehensiveness of our search results.  You should search the USPTO and WIPO (if appropriate) databases as best you can.  The marketplace is another place for you to begin looking if your invention, product, or mark already exists in the public domain.  Often, by using the Internet inventors can determine if their invention or product has been publicly disclosed or used.  Your search effort, in combination with our professional search significantly increases the likelihood that we have found all pertinent reference that an examiner or an opposing party will find.  For more details, please review our prior-art patentability search page.

This common search finds the most related prior-art patents pertinent to the patentability of your invention.  Typically, 5-15 prior-art patents are found and may serve as a basis for a patentability opinion , and are submitted in an invention disclosure statement with your patent applications filing.  

Non-patent publications are prior art for all they disclose just like a patent publication.  We search literature in over 100 US databases, and other online resources.  Typically, the search returns abstracts and/or the full-text of relevant publications.  Often, the Full text of the abstracts is available with copyright permission at a cost of $20-$45/publication.

Foreign art that reads onto your claimed invention can prevent you from attaining a patent.  We search major national and international databases for relevant foreign patents. 

Our thorough validity search provides patent and non-patent prior-art that the reference patent tends to read on.  That is, we find prior-art that is within the reference patent’s broadest claim scope.  Such prior-art serves as a basis for a legal opinion against infringement or as due diligence prior to selling or license a patent.  We provide a detailed graph that charts validity for a sufficient number of independent claims.

Our search reports typically list, and attach, 5 to 15 related national and/or international patents wherein the most representative patents include a brief and relevant description with reference to exact claims, figures, and/or specification lines used.  We further indicate what USPTO or international classes and subclasses we searched.  The search report is suitable as a basis for a patentability opinion.  Unlike many patent searching agencies who have little, if any, technical or patent law knowledge, Bay Area IP increases the evidentiary value of your search report by including a commentary in your report of any caveats or contextual information that we know to be critical to support a proper analysis by your agent or attorney performing the patentability opinion.  The search report, including our detailed commentary, is yours to keep, and use as you will.  Of course, we would like to have you also choose us for your patentability opinion and patent application, but our searching services are a separate activity at our firm and there is no pressure, questions, or ‘hooks’ against you taking your search report to another firm, for any reason.

Unfortunately, no one can guarantee a patent search, not even the USPTO.  To provide you a service commensurate with your financial situation, we provide various levels of searching options, each providing different degrees of depth and breadth of our search.  In our most basic search , our goal is to determine, with high confidence, if the exact invention has been previously disclosed in a patent.  In our most comprehensive level of search we search patents and printed publications to determine, with reasonably high confidence, if the exact invention exist, or an obvious variation can be construed based on one or more prior-art reference in combination.  A patentability opinion would then be rendered to advise you if you should proceed with a patent application.  The corresponding cost can run from a couple of hundred dollars (e.g., if you did an extensive search and the patentability opinion is strait forward) to a thousand dollars (e.g., if you did not do an extensive search for a complex technical area where the patentability opinion is not strait forward) or more.  In some cases, especially for very simple patents, a patentability opinion could cost more than simply preparing/filing the patent application without a patentability search.  For clients on very limited budgets it often makes sense for them to do a preliminary online search, and then have us do a basic search combined with a patentability opinion as a basis for proceeding forward to draft/file a patent application. 

Generally, when cost is not a top constraint the more time spent searching, up to some limit, and the broader the search scope, the more likely that we are to find substantially the same or similar prior-art that the examiner (who has a very limited time to search) will find, thereby significantly increasing the likelihood of a patent being awarded with a relatively clean prosecution history.  However, because patent classes and subclasses are used in some aspects of the search, it is entirely possible that some very pertinent patents have been misclassified, and hence potentially missed.  An additional level of uncertainty stems from the fact that only issued patents and published patent applications are searchable outside a patent office.  A secret pending application may exist (for at least 18 months, and sometimes all the way until issuance) that the examiner could assert against your application.  Other sources of missed references can arise from references (sometimes buried within hundreds) that are obscured by using non-standard terms and/or generic (or misleading) titles/abstracts, or figures.  Some other search limitations arise from limitations in the USPTO database, which include the following:

Thus, it should be clear that the effectiveness of any patentability search depends on many uncertain factors.  Our searcher’s strong knowledge of patent practice and technology combined with excellent searching skills can significantly increase the accuracy and efficiency of the searching process.  The exact choice of cost limits, search scope, and searching professional is made on a case-by-case basis depending on our client’s particular goals and risk tolerance level.