The Patent Office will not issue a patent on something that has already been patented. To determine if your idea has already been patented the following steps should be taken:
1) You will be asked to fill out an “Invention Disclosure Form". This form asks for contact information and answers to basic questions regarding your idea so that the attorney has the correct information to determine if a search should be done based on your idea. This step call “the analysis" and should be FREE. The analysis should cover basic items such as, does your idea meet the requirements of a patent and if so would it qualify as a utility, plant or design patent? A utility patent has to do with how the invention functions or works. Plant patent refers to, of course, plants., Design patents have to do with the look or ornamental features of an element. If your idea falls under design category, then you will be told to go directly to the patenting stage because with the nature of a design patent it is less expensive to apply for the patent then to have a search performed. In the case of a Utility patent, you need to have a search done.
2) The next criteria is “Awareness", has the attorney ever had this idea come up or been made aware of it. In my opinion, the most common invention submitted is the “remote control finder". Everyone thinks they invented this!
3) It is important to understand that the technology must exist to make your invention work. If there is a question, then you must be able to build a prototype and prove the technology exists. We call this the “Time Machine" test. We would love to be able to travel through time and this would be a great invention but no one has developed the technology to make it happen. Another good example of this is the Star Trek transporter.
4) Finally we have “Obvious". This is a difficult test to describe but think back to when we mentioned the “Remote Control Finder". Everyone is aware that when you lose your cordless phone you can press a button on the base unit and the receiver will beep. Based on this invention, a remote control finder may be ‘Obvious" because it would be obvious to put the reciever on items other than a phone, such as the remote control, so that when the button is pushed, the missing item beeps instead of the phone.
If the results of an analysis are in your favor, it will be suggested that you have the attorney conduct a “Patentability Analysis Search" otherwise known as a "Limited Patent Search". It’s called limited because it usually takes around 2 hours to conduct and is on the affordable side. A limited search ranges in the neighborhood of $450-$1000 depending on who you use to perform the search, the time spent and how quickly you need results back. It is important to note that just because a search costs more money does not mean you are getting a better search. Make sure you check out the credentials of the person doing the search. It’s good to look for someone who has worked as a patent examiner at the United States Patent Office (UPO) for several years, as they have been trained thoroughly on the system and know all the shortcuts. Make sure they actually have their hands in the search and do not have another company or computer program doing your search.
The results of your search should contain any relevant patents or public disclosure documents pertaining to your invention. Even if the attorney believes your idea to be patentable you should still have documents to look over because it’s important to see and understand that your patent application will be based on other prior art. The attorney will need to site examples based on other patents that either have been issued or published. An application will automatically be published after 18 months whether it has been looked at or not. For this reason, a patent search is never 100% effective because prior to publishing no one has access to an application. If your idea was filed the day before an attorney does his search, he would have no way of knowing what you just filed. This is the chance you take when applying for a patent. The good thing to remember is that it’'s the person who came up with the idea first and not the person who filed first who will be deemed the inventor, but that’s a subject for another article itself.
The best way to answer the question, “Why can’t I do my Patent Search Myself?" is this.
Ask yourself, “could this attorney walk into my place of employment, walk up to my station or desk on Monday morning and do my job?" The attorney would have none of your years of training and would not possess a working knowledge the elements of your work. The attorney may not even know where to begin. If you gave the attorney an entire day, with-out anyone telling them what to do, they may figure out where to begin or what programs they should use or how to turn on machinery. After a week they may even have have a rudimentary ability to perform your work. But the point is this, why should they spend all their time and energy to do what someone else has spent their career training for? How much money and family time have they lost because they were too stubborn to realize that there is someone who is trained to do this, and if I let the trained individual handle it I will save time and a lot of money I would rather keep. In the end, even if you are an extremely bright person, you are still untrained and you are bound to miss something. Let the professionals do their job! No one wants to spend money unnecessarily and it is better to spend a few dollars now to save a lot of dollars later.
Attorney Steven Leavitt and Jillian Freed host the online radio show Entrepreneur Magazine's, Inventions, Patents & beyond...It may be heard live Thursday 2PM est/11am pst or anytime on archive or podcast at http://www.youinventit.com/radio_show.html... ENJOY!
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