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To Search or Not to Search

April 17, 2009 by · Comments Off
Filed under: Patent Articles 

Inventors are often faced with the challenge of funding the patenting process. In many cases, the inventor may forego a novelty search to save money in the near term but at great long term expense.

When determining whether to grant a patent, an examiner of the United States Patent & Trademark Office (USPTO) will search relevant areas known as class and subclasses directed to a particular field of invention associated with the patent application. The examiner may also electronically search other databases and the Internet. Nonetheless, after a search is conducted, the examiner will evaluate the most relevant references to determine if the claims of the patent application are novel. If the claims are novel, then the Examiner will also determine if the claims are non-obvious. Generally, if both these conditions (novelty and non-obvious) are meet, the Examiner may grant a patent.

The ultimate decision to grant or deny a patent application is made by the United States Patent & Trademark Office (USPTO), not by the patent practitioner, so the patent practitioner cannot guarantee that any application filed will issue as an allowed U.S. Patent. However, if an electronic search is conducted of at least issued patents and published patent applications, the practitioner has a better chance of finding issued patents or pending published applications that may adversely affect the patent application. In some instances, the search may yield results that would strongly suggest not moving forward with the preparation of a patent application; thus, saving the inventor the expense which could be thousands of dollars to prepare a non-provisional patent application.

The references discovered in a search can be used by the patent practitioner to carefully describe the invention in terms that are unique and which clearly articulate inventive features that the novel and/or non-obvious over some of the existing issued patents or published patent applications. Thus, the inventor’s chances of being successful at obtaining a patent are greatly increased. It is hard to anticipate all possible issued patents, literature, and non-literature references around the globe. Nonetheless, a search is money well spent.