| Michael E. Byczek, Attorney at Law |
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Why Search The federal government has the resources to find a vast amount of information that not even an experienced professional can locate. Examiners are assigned to categories of applications based on technical speciality. They have onsite access to over 17,000 scientific, technical, business, and general periodical titles. Examiners also search all granted and pending applications. If somebody else beat you to the Patent Office or published details about a similar idea, chances are that a federal examiner will locate such a document. It doesn't matter whether a product was ever brought to market, or if the general public even knew about the invention. Each issued patent is assigned a primary class and subclass number. There are currently over 470 different classes that when combined with subclasses, create 150,000 unique categories. The index alone is over 250 pages. There are 1,200 different search templates that define the resources and methodology used to locate references. Each class has a definition that contains numerous cross-references and detailed descriptions of technology in that particular field. A patentability search will never offer a definitive guarantee that an application will be granted. There is not enough time or money to search every patent in each country, all periodical articles published in the world, or every website on the Internet. Without a search, you won't know how to structure an application based on what has already been done. One benefit of a search is to “work around” existing ideas, concepts, and products by adapting or modifying your invention. You may have the next big idea. Don’t let an existing patent discourage you from obtaining your own. What is a Search? Relevant references are referred to as “prior art”, meaning that your invention was described in an earlier document. One well-known lawsuit shows why a perfect search may be impossible (In re Hall, 781 F.2d 897, Fed. Cir. 1986). A U.S. patent application was rejected based on a student in Germany who submitted a thesis to a university library. It was cataloged and put into a “stack” of papers. It was only necessary that the thesis was publicly accessible, even if in an extremely limited sense. The case took place before Internet-access to educational networks. It didn't matter whether anybody ever read the thesis, only that it was available. It is common to have multiple categories, especially when searching for prior art. Classifications are useful when preparing your application, and mandatory if you request an accelerated examination. There are two statutory tests for patentability: Novelty and Obviousness. Novelty is another term for new. The following questions are useful. Did an earlier inventor anticipate your invention? Does the public know about your idea? Is the invention used by the public? Has it been more than one year since the public first started using the invention? Was the invention available for sale? Did the inventor abandon the possibility of obtaining a patent? Did the inventor obtain a foreign patent? Who is the true inventor? When was the invention first conceived? Obviousness is another way of asking whether an idea is a “No Brainer”, in which case the federal government will not issue a patent. Did the applicant merely modify something that already existed? Could the idea be conceived by combining two more references? Does a reference teach how to make an invention? Are there apparent differences? Did the reference propose how to make certain modifications? What is the scope of the reference? Are the claims different or the same? Who is a person of ordinary skill in the field related to the invention? How did the references solve a problem? How fast are innovations developed in the field? Is the associated technology sophisticated or basic? Who is a typical worker in the field? What is the commercial success of these existing ideas? Do individuals need the new invention? Did the inventor obtain an unexpected result? Is there skepticism related to the new idea? Has any industry adopted these concepts? Who created the references? Were the references developed pursuant to an employment or research agreement? Did the inventor or a co-researcher create the references? Over 7.3 million patents have been granted since the USPTO opened in 1790. Without a doubt, the number of inventions that overlap or borrow from each other is countless. The goal is to structure your application to avoid re-patenting what has already been invented. Copyright © 2008-2010. Michael E. Byczek. All Rights Reserved. |