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Doing your own "prior art" search

topic posted Tue, June 5, 2007 - 9:16 PM by  Schpanky
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Doing your own "prior art" search --- how feasible is it? What kind of databases do the professionals/ patent attorneys access? Is this information public? Is there an easy way to do it or is it worth it to pay someone else to do it?
b
posted by:
Schpanky
San Diego
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  • Re: Doing your own "prior art" search

    Tue, June 5, 2007 - 10:24 PM
    If you have a lot of time you can do it through the USPTO website, which is free. its not the fastest website in the world, nor the best search interface, but it works fine.

    pros use paid databases like delphion, micropat, you probably don't have that kind of money or the interest in spending that kind of money. Dunno if "patent cafe" is free, or if google patent search is worth it.

    As far as I can tell, most people do fairly cursory novelty searches - couple of hours - if you figure you are 10x slower than they are and are willing to invest 20 to 40 hours you will learn a lot.

    Be forewarned you should keep a list of every patent you look at for your IDS.
    • Re: Doing your own "prior art" search

      Wed, June 6, 2007 - 2:51 PM
      I think that it's the quality of the searching and analysis of what's revealed that you pay for, rather than merely the cost of the database. If you're fairly comfortable with electronic searching, use of one of the available public databases (actually, they're all available to the public -- none limited to patent professionals, although some charge fees) should give you a good idea of what's out there. For a more comprehensive and (usually) reliable view, paying a professional a couple of thousand dollars for a good search may give you greater confidence before spending $10K-$50K trying to get a patent out of the US Patent Office (if, in fact, your technology is patentable).

      As a side note, you need not list "every patent you look at" on your IDS (Information Disclosure Statement -- a document you give to the US patent office during prosecution) -- you only need to disclose MATERIAL prior art of which you're aware. Patent examiners neither want to see nor need to see everything you find -- especially the irrelevant stuff.
      • Re: Doing your own "prior art" search

        Wed, June 6, 2007 - 10:51 PM
        Gary ...

        <<If you're fairly comfortable with electronic searching, use of one of the available public databases (actually, they're all available to the public -- none limited to patent professionals, although some charge fees) should give you a good idea of what's out there. >>

        And those would be?? Still my question isn't answered. Can I conduct this search on my own, accessing the same information or is it WORTH IT to pay a PA to do it?

        <<For a more comprehensive and (usually) reliable view, paying a professional a couple of thousand dollars for a good search may give you greater confidence before spending $10K-$50K trying to get a patent out of the US Patent Office >

        Not to be brash, honestly, I've never dealt with lawyers/ attorneys (besides one of my good friends ex husband, who seemed to be pretty cool, until the divorce) but, are you kidding me? A couple thou? Zoomlegal.com will do a "prior art" search for around $300 and a quote from a PA in my area was $600. As far as I know, they're relatively reputable.

        My perspective is to find the cheapest route to determining whether or not my idea has a) been patented before and << (if, in fact, your technology is patentable). >> b) is patentable.

        The whole idea of paying a minimum of $3500 to apply for a patent that may be denied is ridiculous to me. What the hell does "obvious" mean anyway? How can I determine whether or not my innovation is "obvious"? Obvious to who? Whose opinion is that based on? Isn't that the reason for most objections?

        On the flip side, thanks for the following info:
        << As a side note, you need not list "every patent you look at" on your IDS (Information Disclosure Statement -- a document you give to the US patent office during prosecution) -- you only need to disclose MATERIAL prior art of which you're aware. Patent examiners neither want to see nor need to see everything you find -- especially the irrelevant stuff. >>

        Not wanting to sound like a crazy inventor but my innovation is simple ... and can be mass marketed ... and meets a ton of the criteria. I just don't know if it's too "obvious" or not. Perhaps it's been submitted and rejected. Can I find that out? Perhaps that would be more valuable.

        Thanks for your advice. Both of you. It's much appreciated!
        b
        • Re: Doing your own "prior art" search

          Thu, June 7, 2007 - 1:23 PM
          >Can I conduct this search on my own
          yes
          >accessing the same information
          yes


          go to www.uspto.gov/patft/index.html

          its free. ALL the patents are there.
          It helps to understand some about the patent classification system, the FAQs on the USPTO site are pretty good. Go spend time there. Do some queries.

          www.google.com/ptshp
          google patent search, never tried it myself, my firm doesn't use it.

          You should also sit down with google and look for your idea - if someone already has made a product like that / with that feature, its not patentable.

          $300 you are probably getting about an hour of someone's time. They are using Micropat or Delphion which are expensive. They will probably send you a "pile of paper' which you have to sift through to decide what is relevant. On many topics, one hour is just not enough to look at the more obvious results to see if they are the same or not.

          Obvious means, obvious to someone "skilled in the art", like an engineer in that technology, but more importantly the patent examiner. The problem is that most ideas ARE obvious - but only in retrospect. Why on earth did it take so many years to put wheels on luggage?

          $3,500 is a cheap patent. You should consider the money or time you spend doing a search as part of the cost. Don't forget that you are going to have to pay USPTO filing fees in addition to the cost of drafting the patent.
          • Re: Doing your own "prior art" search

            Fri, June 8, 2007 - 8:11 PM
            Thanks so much. Your knowledge has been very helpful and seems to be in line with everything I have read up to this point. I'm leaning towards getting some expert advice since I am definitely concerned that my idea will appear obvious. It's an update to an existing item and though I have never encountered it before, it's possible some other brilliant soul had the same idea at some point in the past. '~)

            Perhaps there's ways to improve upon or word in such a way that I can make it work. :~)
            Regardless, thanks again!!
            b
            • Re: Doing your own "prior art" search

              Mon, September 3, 2007 - 8:00 PM
              So how is it going with you patent application? I think you should file a provisional application. It only costs 100 dollars. Just lock in your date of invention. There are different types of inventions and how ccomplex they are so just get your drawings (and basic ones are fine) done, describe what you invented and then talk to a patent agent as they are much cheaper to write your patent application.
              Cathleen
      • Unsu...
         

        Re: Doing your own "prior art" search

        Thu, June 21, 2007 - 12:27 AM
        >>As a side note, you need not list "every patent you look at" on your IDS (Information Disclosure Statement -- a document you give to the US patent office during prosecution) -- you only need to disclose MATERIAL prior art of which you're aware. Patent examiners neither want to see nor need to see everything you find -- especially the irrelevant stuff.<<

        To clarify, if you (entity drafting the patent application) is aware of any prior art that's *relevant* the invention, you should list it in an IDS. It's often difficult to determine what's relevant, but my understanding is that one should err on the side of caution and list anything that may be remotely relevant.
        • Unsu...
           

          Re: Doing your own "prior art" search

          Thu, July 5, 2007 - 4:38 PM
          I believe that there are some older books on how to patent search. You may find them on ebay or alibris or even amazon.

          Good luck. Searching can be a never ending process.

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