By Debby Winters
A patent attorney can assist you in having a prior art search performed. A brief written description and possibly a few drawings or sketches of the invention should be prepared. This information is provided on a confidential basis to a professional patent search firm that will conduct the patent search. These firms are usually located in Northern Virginia near the PTO and are staffed with engineers and scientists, at least some of whom may be former patent examiners. The search firm provides the information to a person with skill in searching the subject matter of the invention who conducts the search.
There are two types of searches that can be conducted. One is a “freedom to operate” search and the other is a “patentability search.” Both take one to two weeks to complete and usually costs between $1,000- $2,000. For a freedom to operate search, the searchers look at claims of US patents that are currently in effect. For a patentability search, the searchers will also search for older US patents, foreign patents, and non-patent literature that may disclose the invention.
The results will typically include a stack of the closest 20-30 patents and other prior art references. The inventor should review them in detail and to bring any that the inventor believes warrant further review to attention. This usually means the closest 3-4. This saves on attorney time of having to review the entire stack. The inventor is usually in the best position to determine any differences or similarities between the references and the invention. After a thorough review, a determination on how best to proceed will be made.
One might reasonably ask why the inventor or the attorney cannot themselves conduct the prior art search on Google, the PTO website, or another search engine. One answer is that it is far more efficient for these experts to perform the search than for the attorney to do so. Their hourly rates are typically much less. Second, the professional searchers find prior art that the inventors and the patent attorney were not able to find.
I almost always advise a new inventor, small company, or start-up to have a prior art search done prior to marketing the invention or preparing a patent application. In my opinion, the advantages of such a search far outweigh the risks or costs of doing so.