As you work with your attorney to complete a non-provisional patent application for your utility, design or asexually reproducing plant-based invention, your attorney will need to conduct a thorough patent search on your behalf. While some inventors and businesses are initially tempted to complete this phase of the application preparation process themselves, it quickly becomes apparent that conducting a thorough search of existing American and foreign patents is a time-intensive, labor-intensive, nuanced task that requires a great deal of experience and specialized skill. In addition, intellectual property attorneys often have access to subscription-based patent search databases that are simply cost prohibitive for the public and most businesses to access.
In order to ensure a complete and accurate search of existing patents, seeking experienced legal guidance is key. Therefore, you do not need to educate yourself about the highly-technical process of conducting a final patent search, as your attorney will navigate the “heavy lifting” on your behalf. However, it is important to understand the aims of such searches, what you may learn from your patent search results and why you should treat your search results with great care and consideration.
Patent Searches – The Basics
Conducting a patent search is a critical phase of the non-provisional patent application process for numerous reasons. Chief among them is the fact that the United States Patent and Trademark Office does not grant patent applicants legally enforceable intellectual property rights for work that is too fundamentally similar to work that has previously received formalized patent recognition. Conducting a search of existing domestic and foreign patents is the most straightforward way to determine whether or not an applicant’s invention may be considered ineligible for patent protection because it too closely mirrors previously patented work.
When the USPTO reviews your non-provisional patent application, it will conduct its own patent search in order to evaluate whether your work fundamentally overlaps with any previously protected inventions. It is partially for this reason why it is so critical that your attorney be given time to conduct a thorough review on your behalf before you submit your final application to the USPTO for evaluation. If your attorney does not complete a thorough patent search, your application could be rejected.
The Importance of A Patent Filing Date
It may be tempting to think, “Well, if my application gets rejected, I’ll just alter it and submit another one.” However, it is important to understand that you need to secure a filing date associated with a non-provisional patent application that is ultimately successful as soon as you can. The USPTO will judge the novelty of your invention against the filing date associated with your patent application. If your application is rejected and you are compelled to submit a new petition, your filing date will be pushed back to the date that the USPTO receives your subsequent application. Why does this matter?
The longer you wait to secure a filing date (associated with an application that is ultimately successful), the more you risk legal vulnerability in two critical ways. First, potentially damaging sources of prior art may emerge as time progresses. If you wait too long to secure a viable filing date, your invention could be forever denied patent protection because it will no longer be considered novel when measured against emerging claims of prior art.
Second, even if your patent application is ultimately successful, your intellectual property rights could be compromised by your later filing date down the road. Should you ever need to defend against claims of infringement or enforce your intellectual property rights against those who would infringe upon them, the novelty of your work will be judged against the filing date associated with your successful patent petition. If prior art was developed between your earlier (unsuccessful) filing date and your later (successful) filing date, you could lose an expensive intellectual property suit simply because it took you more than one “try” to secure approval for your non-provisional patent application. As a result, your attorney needs to be given time to conduct a thorough patent search in order to place you in the best possible position for your application to succeed the first (and hopefully only) time it is submitted.
What Is a Patent Classification Search?
When your attorney begins a final patent search, that patent search will likely take advantage of the “patent classification search” model. All patent applications are classified by the USPTO and other patent search databases into specific patent classification schemes. These schemes are generally structured according to the technical content of any patent applications they contain. Once a patent application is input into a database (including the USPTO’s public database, Google’s patent search database and other search service platforms), it is assigned certain classification codes and/or symbols.
These designations alert searchers to certain features present in any specific patent application. This classification model can prove helpful during a patent search in a number of ways. Chief among them is the ease with which attorneys can cross-search patents classified as containing any specifically relevant feature. When seeking to determine whether any two inventions in existence share the same fundamental features, this cross-check function is obviously critical. Broadly speaking, classifications and sub classes are generally broken down by an invention’s composition, process, function and manufacture.
The USPTO’s patent search database features more than 7.5 million patent-related documents. A patent classification search will help your attorney navigate these documents in ways that are relevant to your application and beneficial for avoiding claims that your work is infringing upon another inventor’s intellectual property rights. Helpfully, the USPTO and the European Patent Office have file services that regularly sync and integrate classification code information, so searching for existing European patents is relatively straightforward during patent classification searches. If your invention may potentially infringe upon intellectual property rights somewhere else in the world, your attorney will likely use a subscription-based patent search database in order to successfully navigate a patent classification search for non-European foreign patents.
Processing the Results of a Patent Classification Search
Once you receive the results of your patent classification search, you may need to process them in several ways. Most urgently, if your search results alert you to the existence of potentially damaging prior art and/or an existing patent that fundamentally mirrors some element of your work, you may need to alter your invention. Only after your invention no longer infringes on the protected rights of other inventors may your work be considered eligible for legal protection issued by the USPTO. While the process of altering your invention may be frustrating, doing so will help to ensure that you can receive patent application approval as soon as your work becomes eligible for patent safeguards.
Please note that previously issued patents are not the only forms of prior art the USPTO (and judges presiding over any future intellectual property rights cases you may be affected by) may take into consideration when evaluating the novelty of your invention. Your attorney may need to examine trade law journals, public discussion forums and various publications in order to rule out any other evidence of potentially damaging prior art before your application may be successfully approved. As a result, it is important to understand that even though your final patent classification search is complete, your application may not yet be ready for submission to the USPTO. Your attorney will explain what additional steps may still need to be taken before you can feel confident in the likelihood that your non-provisional patent application will be approved the first time it is submitted.
Patent classification searches help to identify similar inventions in an applicant’s patent class that have previously been granted legal protection. Depending on the results your attorney comes across, you may benefit from doing some research into other existing patents within your class, regardless of whether they fundamentally mirror your own work. The process of searching patents can often serve as inspiration for inventors who may not be familiar with the ways in which other inventions work or are manufactured. Your next great idea may be sparked by learning about other existing inventions within relevant classifications. You will likely learn more about both your competitors and your industry as you process the results of your patent classification search.
Intellectual Property Assistance Is Available
If you or your business has created an invention that may be eligible for patent protection, it is important to speak with an attorney as soon as you possibly can. Both you or your business and your invention will remain legally vulnerable until you secure a USPTO application filing date that is ultimately tied to a successful non-provisional patent application. Working with an intellectual property attorney in order to begin the process of completing a successful application will help to ensure that your intellectual property rights are protected and that you remain protected from claims of infringement by others. Please consider scheduling a consultation with a member of the LawTrades intellectual property team today. Each of our attorneys is passionate about protecting the rights of hard-working inventors and will be happy to answer any questions you may have about the patent application process.