Lawyers and Settlements

Intellectual Property: Patents

STEP 2. Conduct a Patentability Search

A professional patent search will almost always save the inventor more money than it costs. What does a patentability search cost? A cost of $600-$1,500 is typical for a professional patentability search and opinion. For most individual inventors with fairly simple inventions, the cost of a professional search with opinion is around $600.00, of which about half is for the search and half for legal work associated with reviewing the invention and advising on the likely scope of coverage. If a formal opinion is not required, the cost can be lowered by about 1/3 to $400-1000.

If a search reveals that the invention is not patentable, then the cost of filing an application will be saved. If the search reveals that the invention may be patentable, the search results allow the patent attorney to prepare a more effective application and that will usually save money during the examination process at the patent office. Finally, the search will usually tell how other inventors have attempted to solve the same problem and may give ideas for making a more competitive product.

For many years, the most accessible and complete library of prior art has been housed in the U.S. Patent and Trademark Office. The public is admitted to this library or "search room"; however, it is used primarily by professionals such as professional searcher. Patent lawyers not in the Washington, D.C. area invariably have Washington, D.C. associates who make various types of patent searches and who obtain other types of information from the Patent and Trademark Office. Increasingly, databases are becoming available by computer that are becoming better and better at locating prior art. The Patent Examiners who will examine your patent application will use computer searching using very sophisticated databases and software and computers with dual monitors and other special features rather than hard copy searching. Increasingly, computerized searching is improving and is now to the point that in the hands of a skilled patent searcher, it is nearly as good as hard copy searching.

The full images of all pages of all patents ever issued by the United States of America since the first one in 1790 are now available on-line at http://164.195.100.11/netahtml/search-adv.htm.

NOTE: Before proceeding to step 3, the inventor should discuss the search results with a patent attorney to determine if there is sufficient patentability to proceed to step 3. The inventor should prepare a business plan to see if this is really feasible before committing to a major expense like the preparation of a good patent application. The Small Business Administration has materials that are very useful to inventors in helping prepare such a business plan. See the information at http://www.sba.gov/starting_business/planning/basic.html. A Provisional Patent Application may decrease up-front costs, and should be considered. See details at http://www.patentcafe.com/faq/index.asp?id=6&sid=6#0.1 (FAQ’s on Provisional Patent Applications) and the discussion below in this article. The services of a patent attorney are usually critical to success.

Information on this page was supplied with permission of Bruce E. Burdick.


Patents | Step 3