In this episode, we explain what a patent search is and the pros and cons of getting one done. We also discuss an inventor's ethical obligation during the patent process.

transcript

Note: The transcript has been modified and abridged.

What I see blindside a lot of new inventors and businesses is how long and expensive the patent game can be. But think about it. Do you think that it's likely to get a government approved monopoly on an invention in less than 1 year and for less than several thousand dollars? Because of this, what I typically advice my clients is 1. become educated about the process and 2. manage expectations. From the get go, it is important to keep in mind that: the USPTO has issued over 6 million patents and someone may have already come up with what you invented or something similar; the average cost to get a U.S. patent is $12,000 to $22,000; and the average time to get the patent can be 2 - 3 years.

PATENT SEARCH

Because of these three items, the first step before investing a lot of your time and money into the patent process is to consider having someone, preferably a patent professional, perform a patent search for you to find "prior art".

"Prior art" is a term of art. Prior art is something that is publicly available that describes your invention or something similar to it. Prior art can be in the form of patents, patent applications, literature like magazine articles, research articles, tradeshow pamphlets, YouTube videos, etc. If prior art is found, you will want to understand how that impacts your invention.

Just because you haven't seen anything else on the market similar to what you invented or you can't find it on Amazon, doesn't mean that prior art does not exist. It is important that whoever is preforming the search knows the proper databases to search to find the inventions on the market and the ones that exist but never made it to the shelf.

Patent professionals may use the USPTO databases or other commercial databases for their searches. They may search for relevant documents in the US or even globally. It is also possible to pay dedicated search firms like Thomson Reuters (Clarivate Derment) to perform a search. Patent searching is more of an art than a science. This is because patent professionals are notorious for using obscure words to describe very simple things. So, you'll want to have an experienced searcher's know-how to wade through all of this noise. Patent searches can cost between $100 to a few thousand dollars depending on the complexity of the invention and the searcher's experience level.

ETHICS

While there's no requirement to perform a search before applying for a patent, you have an ethical duty to disclose to the USPTO anything that may be relevant to the patentability of your invention. This includes any relevant prior art that came up while performing a search. There is no requirement to continuously and proactively search for prior art, but if you or anyone representing you knows about prior art and fails to tell the USPTO, your patent can be declared worthless because of fraud and inequitable conduct.

So, if you are at a conference and find out during a breakout session that 2 years before you applied for a patent another research group published a paper describing your invention or something similar to it, you have to tell the USPTO about it. This ethical duty continues until a patent has issued.

disclaimer

This video describes these legal concepts in very general terms. The information contained in this video has been made available for informational and educational purposes only. Jade IP Consulting, LLC ("Jade IPC") does not make any representation or warranties with respect to the accuracy, applicability, fitness, or completeness of this video. Jade IPC does not warrant the performance, effectiveness or applicability of any sites listed or linked to this video. This video is not intended to be a substitute for professional legal advice. Always seek the advice of your attorney or other qualified attorney with any questions you may have regarding a legal issue. Never disregard professional legal advice or delay in seeking it because of something you have read or seen in this video or any of our other videos. Jade IPC hereby disclaims any and all liability to any party for any direct, indirect, implied, punitive, special, incidental or other consequential damages arising directly or indirectly from any use of this video or other video content made by Jade IPC, which is provided as is, and without warranties. © 2020 Jade IP Consulting, LLC, All rights reserved.