Ok – so I’m frustrated – one of my favorite Clients’ just found out most of what we were hoping were the patentable aspects of their invention have been done before. I’m frustrated because I had advised and repeatedly warned they should conduct at least a basic patent search before filing their complete patent (which in this case was a PCT patent application). The client had conducted some brief searches themselves but had failed to conduct the search properly and did not wish to allow us to spend an hour or so reviewing what documents they had found. Below are some reasons why you need at least a basic professional patent search.
There are literally millions of published patent specifications and there is almost always someone who has submitted a patent for aspects or parts of your invention. This does not mean you won’t be able to achieve you own patent but it does mean that you will need to focus on the new aspects of you invention.
You need to know your enemy ! By having at least a basic knowledge of prior patents it is much easier to focus your patent on the new advantages. This is really important as if you wait until patent examination for your first search it may be too late to refine your patent application.
There are two reasons why most patent attorneys don’t perform patent searches – risk and loss of work (if they find something similar you may not file a patent). We believe this approach is wrong and we offer all of our clients’ the option of a First-Cut patent search prior to filing a provisional patent or a complete patent. We then integrate the search results into the provisional patent or complete patent to bolster its effectiveness. Sometimes for commercial reasons searches may be conducted after the provisional patent is filed. However, we always strongly recommend a patent search is conducted prior to filing a complete patent application.
Our First-Cut search is a propriety patent search developed by Caska IP Patent Attorneys to determine if an invention is likely to be patentable and, if so, what kind of patent scope you may achieve. Our First-Cut search is based around the 80:20 rule to keep cost down. In other words, our search is about 80% effective and incurs cost of about 20% of the cost of a full scale worldwide novelty search and patent attorney opinion which normally will cost at least $ 5,000, if done properly. Our First-Cut search and opinion typically ranges in cost from about $1,000 to $1,500 and has proven extremely effective in assisting Clients to broadly determine the patentability of their invention.
The Australian patent office offers an international type search on a filed provisional patent applications. This search can be conducted within 8 months of filing. We recommend all of our Clients’ to request this search. The cost is about $2,500 and a patent examiner will provide a search report identifying documents which are relevant to the patentability of your invention. This provides an additional level of confidence in your invention and provides a validation or compliment to the firs-cut patent search results.
Don’t waste your money on seeking a patent without at least a basic patent search. If you want to be at least 80% sure you are on the right track – we can conduct our First-Cut patent search and opinion. Otherwise, we can request an international-Type search on your provisional patent after it is filed.