By Debby Winters
Clients frequently come to me with the question “how do I know if my idea is truly new and can be patented?” The standard and easy response that you will get from most patent attorneys will probably be “hire our firm to do a patentability or prior art search and we can tell you” but in my opinion this is not the proper answer. I tell my clients that the answer is more complicated than that as there are many factors to consider, and all on a case by case basis.
While conducting a patentability search and a prior art search is extremely valuable, it is not the be all and end all that many patent attorneys portray it to be as many times there are key articles or other patents that are missed. This means that despite best efforts, and some very smart people using very expensive searching tools, it is nearly impossible to figure out if your idea is truly new or novel. Chances are that there is someone somewhere around the world who has invented the same thing or something very close to it. It’s very hard to find that out, even with advanced searching technology. However, the benefits you receive from the search can be valuable in many other ways.
But how do you truly know if your idea is new? The response I gave to this question is that you can’t ever know for certain but if you do a good patent search and combine that with an internet search using Google and other search engines that have large information databases, you can get a good feel for how new your invention is, BUT there are never guarantees. Hopefully this search will give you enough information to justify your patent filing but I would never bet any money that your idea is truly new or novel on the fact that a patent search did not find any identical inventions. My basic premise is always that the lack of finding something does not prove that it does not exist.
The patent search before you file your patent is your first indication of how new your idea may be. The second test will come as you go through the patent prosecution process and the US Patent Office will do its own search. Usually that search will pick up a few things that your professional search missed. Most of the time you can convince the patent examiner that your idea is different from the similar inventions that their search found.
The last and final test will be a “cease and desist” letter or a lawsuit saying that you are infringing on the patent someone else already has. This is often scary for people to hear but the good news is that if you are successful enough to get these types of letters then this usually means your invention is doing well in the marketplace and you should have enough money to defend your patent.
The bottom line is there is so much information out there and so many people doing so many things around the world that it is nearly impossible to know if any idea is truly new and novel. The best we can hope for is a good enough patent search upfront to help us draft our patent in a way that will get it allowed by the patent office. Nobody truly knows if their invention is new and novel until either the patent office certifies that it is with an issued patent, and even then the patent office may have missed something.