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Patent Law Firm: us patent, patent search, patent attorney, patent an invention, patent idea, patent information, patent law, patent application, u.s patent, united state patent, patent lawyer, patent agent, us patent search, software patent, patent pending, patent research, design patent, patent protection, patent help, patents, invention marketing in San Francisco Bay Area, Silicon Valley, San Jose, Santa Clara.™

 

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patent search/research related questions

Should I have a Professional Patent Search done before filing a Provisional Application for Patent?
Should I have a Professional Patent Search done before filing a Full, Utility Patent Application?
Should I have a Professional Patent Search done before filing a Design Patent Application?
Which level of flat-fee Patent Search is right for me?

 

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Should I have a Professional Patent Search done before filing a Provisional Patent Application (PPA)?

The short answer is, not usually- for the following reasons: The main motivation to filing a PPA is to avoid making significant investments in patent protection of an idea before having some degree of confidence that the idea has commercial value. However, the risk of not performing the patent search is that you may lose your earlier filing date if a prior-art patent(s) exists that makes your PPA disclosure unpatentable, where if you discovered the patent prior to filing the PPA, it would have given you an opportunity to design your invention around the patent, thereby securing an earlier "First-to-Invent" filing date. So, if you suspect that others may be coming up with your same or similar idea, and you suspect that your invention is commercially viable, then a prior-art patent search is wise to perform prior to filing any patent application, including a PPA. Of course, if you consider that the cost of PPA service you plan to procure is high enough to warrant performing a Professional Patent Search to help protect against loosing your investment in the PPA, then procure a Professional Patent Search search would be wise. If the search is favorable to the patentability of your idea, then what ever was found in the search would be filed in an information disclosure statement for the later filed full, Utility Patent Application. The end result is a stronger full, Utility Patent Application for the same reasons of why it is important to do a prior-art search in general.

Should I have a Professional Patent Search done before filing a Full, Utility Patent Application?

Well, apart from the insurance policy benefit of a prior-art search, there are important reasons why a relatively thorough patent search should be performed that affect the scope, and strength, of any future patent. The comments made regarding the same question for the PPA additionally applies here too. However, because a Utility Patent Application costs substantially more than a PPA, especially our do-it-yourself PPA services, then there is that much more reason to have a professional prior-art patent search performed as an insurance policy against losing your significant financial investment, and the earlier "First-to-Invent" filing date.

Should I have a Professional Patent Search done before filing a Design Patent Application?

Given that the cost of a Design Patent Application is relatively low, on par with our cost oriented do-it-yourself PPA services, the conclusion is pretty much the same as that given for the PPA, which is if you suspect that others may be coming up with your same or similar design, and you suspect that your design is commercially viable, then a prior-art patent search is wise to perform prior to filing a Design Patent Application.

Which level of flat-fee Patent Search is right for me?

That depends on the complexity of your invention and the level of confidence you feel you need before making a significant investment in applying for patent protection of your idea. The Basic, low complexity Patent Search (#SP01) level of service satisfies the goals of most people with relatively simple ideas who seek low-cost and want to discover if the same or highly similar patents exist. It is conducted by a Patent Engineer search professional and is good for finding direct or very similar matches used in 35 USC 102 anticipation rejections. However, if you are highly concerned about patentability, you may want to consider the "Basic Search Pro" level (#SP02), which is conducted by a Registered Patent Agent having at least a Masters Engineer degree. This level of research is a deeper probe, which searches for additional patents, beyond direct/similar matches, that may be used in combination by a Patent Examiner in a 35 USC 103 obviousness rejection, thereby substantially increasing the likelihood that we can overcome an Examiners rejection without having to limit the patent's scope and avoid prosecution history estoppels. This issue is particularly important if you are planning to invest a much time and money into your invention (e.g., starting a company) or have to block potential competitors, whereby it is much more important to reduce your risk with respect to patentability. To that end, the "Basic Search Pro" search will provide you more in-depth patentability results while still being budget conscious.

 

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