Jan 26, 2022

Patent Searches

Article By Patent Attorney Stephen Bullock
An inventor may, but is not obligated to have their patent attorney perform a patent search. A patent attorney performs a patent search to see if there are any patents or published patent applications that are the same or similar to an invention. This is done to evaluate how the patent office may treat an inventor’s application should they receive one.

Some inventors begin with a patent search as an initial step. Some inventors file a provisional patent application first and then perform their patent search afterward. Other inventors don’t have the patent attorney perform a patent search at all.

Once a patent attorney performs a patent search, the patent attorney is obligated to disclose the relevant results of that patent search to the United States Patent and Trademark Office (USPTO) upon the filing of a non-provisional utility patent application.

Some inventors believe performing a patent search is a prudent way to determine whether they would like to pursue a provisional patent application or a non-provisional patent application. Other inventors use a patent search as a means to determine what may exist in a particular technology field so that they can improve upon it or modify their own invention to differ from what exists.

Some inventors are secure enough in their creation that they do not want to perform a patent search. These inventors will often engage the patent attorney to draft and file a provisional patent application or a non-provisional utility patent application without spending the time or money on a patent search.

There are pros and cons to performing a patent search that should be considered by each inventor. A benefit to having a patent attorney perform a patent search is that the patent attorney can use their patent prosecution experience to evaluate the patent search results.

One drawback of a patent search is that no patent search can ever be completely conclusive. That is because there are millions of potential references that could be cited in a patent search. Many times, the subjective mindset of the person performing the patent search plays into whether the results are relevant or not.

The patent examiner assigned to a patent application will perform their own patent search, which may differ from the patent attorney’s search. This is because the patent examiner may be searching with a different database. Or, the patent examiner may consider other references to be applicable, which the patent attorney does not consider relevant.

There are pros and cons to patent searches that should be discussed with your patent attorney to determine if a patent search fits your time, budget, and patent protection strategy.
If you have questions regarding protecting your intellectual property, contact Patent Attorney Stephen Bullock at 877-354-0809.

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