We are often questioned regarding the use and effectiveness of on-line patent searching sources. Over the years, we have had clients choose to perform their own searches, conclude that there was no problematic prior art, and file patent applications - only to find out later that they missed something of great importance. Sometimes, the prior art was simply overlooked or under-appreciated; sometimes, the database did not provide documents going back far enough into the patent record to provide an adequate survey of the relevant prior art. Significantly, if a material reference has been reviewed by the inventor/ applicant, but is not disclosed to the U.S. Patent Examiner during prosecution of the application in full compliance with the substantive and procedural requirements of U.S. patent law, any resulting patent is at risk of being invalidated by a court of law.
Often, errant search results will require the expenditure of significantly greater time and financial resources than it otherwise would have taken with adequate advance search information. Errant results require that prosecution strategies be revised; reduced patent coverage conceded. In worst-case scenarios, no patent can be obtained whatsoever. Accordingly, a well-executed professional search can save a tremendous amount of time, energy, money, and frustration. Well-executed patent searches are truly "an ounce of prevention."
We counsel our clients that the process of patent searching is highly detailed, requires extensive amounts of time, and requires skill, experience, and competence in reading and understanding the references found - from both a legal and technical prospective. Inventive classifications should be cross-referenced and harmonized against analogous art. Prior art ‘References Cited' should be read. More recent citing references should be read. Published applications should be reviewed. And, not to be minimized, neutrality in the searching process can help avoid the "unintentional blind-spots" to which we are all prone with regard to our own ideas. Of course, no search can ever be guaranteed to be perfect; however, it is our experience that reliance is best placed upon the professional search.
While there are several high-quality and feature-rich patent search sites available on the internet, it is our experience that most free, publicly-available sites simply do not go back in time sufficiently far to assure full coverage regarding many kinds of products and technologies. This is even true of the U.S. Patent and Trademark Office website. And while extensive proprietary databases are available for patent attorneys and corporate users, it is our experience that these databases are expensive and, generally, are not made available to the small business or consumer markets.
We do encourage you to conduct your own screening search. You will learn a great deal about the patent process and the general nature of patents. You may find ways to enhance the value and patentability of your own product by solving additional problems discussed in the prior art. If you find a problematic reference, we can review that reference early and use it to best advantage. But, we also encourage you to consider engaging us to conduct a professional, confidential search prior to the filing of a patent application. Our searchers will review the same patents as will be used by the U.S. Patent Examiners who will examine your case. Our searchers have the experience to find the most relevant references for our consideration and use.
It is a simple fact that, in most cases, we are able to obtain better results for our clients, in a more efficient and economical manner, when we have been given the benefit of a professional patent search conducted in advance of the filing of a patent application.
Thank you for your consideration of these points. Please feel free to ask us any further questions you might have on this topic!