Tips for Patentability Searching

By Frederic M. Douglas

© 2012, Frederic M. Douglas, All Rights Reserved.

         

      Persons new to filing patent applications often have basic questions regarding patent searches. Should an inventor do a patent search? Is a patent search required? Does it matter when a patent search is done? What happens when nothing is found? What should be done when the inventor finds out that the invention is not patentable?

      Patent searches are optional. There is no requirement in the U.S. that an inventor perform a patentability search before filing a patent application. Some rookie inventors are confused by the requirement that IF a search is done and relevant prior art is discovered, that relevant prior art should usually be disclosed to the patent examiner or the inventor may be accused of fraud. Note that still, a prior art search is not required, just passing on known relevant prior art, from an optional search is required.

      Some inventors take the position that they do not want a search so they find out any bad news. If they find out no bad news, there is nothing withheld from the patent office, as the inventor never had the bad news to reveal. Also, waiting for patent search results and later making needed invention changes has can delay a race to the patent office. Certainly, when the U.S. Patent Office switches to a first-to-file system in March 2013, promptly filing patent applications will become more important.

       However, the patent office does do its own patentability searches. So at some point the inventor may find out the bad news that prior art bars getting a patent issued. By the time that the patent examiner conveys the bad news, the inventor has spent a considerable amount to prepare and file the patent application, waited several years for the first notice from the examiner, and invested funds on manufacturing and marketing the invention with an expectation of exclusivity. By the time that the inventor finds out that no patent will issue, the original patent application issues, telling the inventor’s competitors how to make and use the invention. Once the competitor finds out that no patent will issues, then they can exploit the technology with impunity without paying one dime.

        Certainly, an inventor should consider the patentability search as similar to having a mechanic review a used car before purchase. While the mechanic will not guarantee that the car will not break down, you will surely find out if there are any clear mechanical problems before you commit to buying the car, registering it, and maintaining it throughout its lifetime. In the same way, an inventor should want to know if there are any clear defects in the idea of patenting an invention before committing to filing a patent application (registering) and paying thousands of dollars in maintenance fees to maintain the life of the issued patent.

        Just like the reviewing mechanic cannot guarantee that the car will last forever, a patent searcher cannot guarantee that no prior art exists that could block getting a patent. The mechanic looks for bad news that can be discovered without taking every bolt and washer apart on the car. The patent searcher can look for prior art, in the searcher’s native language, on computer databases throughout the world. However, the patent searcher is not likely to be aware of a single copy of a Swahili-language doctoral thesis sitting on a library shelf in Tajikistan. Thus, care should be taken to have a very good searcher involved with an understanding that searching must reach as far as feasible but at some point must reach a limit.

        Rookie inventors sometimes do their own patent search and claim that they found “nothing like it” regarding their invention. The reality that they are missing is that their search was not competent. While there is no way to find every single piece of prior art throughout the universe, there also is no way to search adequately and not find at least some things that are related to the invention.

        Another issue for novice inventors is finding barring prior art after performing an adequate search before filing a patent application. The fact is that a patent searcher can only find what is publicly available. If a search is performed on February 1st and the patent application is filed on April 30^th, the patent office examiner may come up with prior art that only published on February 2^nd.

Unfortunately, it is rather common that a patentability search comes up with a ton of prior art such that there is now way to get a patent for the invention. The good news is that the bad news is discovered before spending time and money on preparing and filing the patent invention that would have been rejected promptly. The take home for the inventor losing out on a patent search is that the inventor now has a thorough review of the prior art, which should be helpful to learn further aspects that can be incorporated into improving the invention.  The inventor can now brainstorm with a focus on significant novel aspects of the invention above the prior art.

After further consideration of the unforeseen aspects of the prior art, the inventor should focus on noting what aspects are missing from the prior art so that the invention can contain several inventive steps above the general state of the prior art. To put it more bluntly, the inventor needs to get back to the drawing board and put more meat onto the present skeleton. The discovered pieces of prior art will help the inventor make progress.

SPICY IP: A trademark application gets filed, examined & published within 72 hours at the Chennai Trademarks Registry: Super Efficiency OR Super Corruption?

SPICY IP: A trademark application gets filed, examined & published within 72 hours at the Chennai Trademarks Registry: Super Efficiency OR Super Corruption?

Developing A Discovery Plan For Litigation

(A) Determine and Review Litigation Objectives

   What does the client want?  Recover physical property?  Avoid incarceration?  Get a jackpot of gold at the end of a rainbow?  Revenge?  Teach someone a lesson?  Whatever the objectives, you need to consider whether you support the client’s objectives (check your bank account balance) and how you can plan discovery to help your client realize the litigation goals.

(B) Review Jury Instructions

   Start at the end.  You must prepare for trial, even though the odds are against going to trial.  If you prepare to win at trial and plan as if you are going to trial, you will improve the odds of prevailing such that a settlement will be obtained to your client’s benefit.

(C) Develop Theory of Case

   This is what guides your execution of your plan.  The theory might have to be modified or even thrown out and exchanged along the way. 

(D) Analyze Opponents' Case

   Look at things from the opponent’s perspective.  What do you think could be their goal(s)?  When are they likely to give up?  What facts do they need to prove?  What key rulings do they need?  Understanding your opponent may be difficult, but vital.

(E) Outline Key Points of Contention

   What key issues do you need to prove?   What key issues does the opponent need to prove?  What are the respective weaknesses?  Are there pending cases that might influence the outcome of these key issues?  What facts do you need to improve your position on these key points?

(F) Review Local Rules

   Local rules can significantly influence the outcome of your case and how discovery proceeds.  Some courts specify that discovery is suspended when a motion to dismiss is pending.  Some courts have detailed procedures for filing motions to compel, with sanctions for not complying. 

(G) Prepare Checklist of Closing Arguments for Trial

   Your goal is to win at trial.  What are you going to argue at trial?  You need to support your arguments with facts, so plan on getting the facts (e.g., admissions, documents, data) that support your intended arguments.

(H) Determine Damages

   If you don’t know where you’re going, any road will take you there.  How much money can you expect to obtain for your client?  How much money can you expect your client to be forced to pay?  In other words, what is on the line?  Get a damages expert early in the game.  You need to understand if the potential damages amounts are in line with your client’s objectives.  Also, you need to tailor your discovery towards supporting your client’s damages position.

(I) Determine Litigation Strategy Objectives

   Does the client want to obtain a preliminary injunction?  Is the goal set for a quick settlement?  Does your client want a case-killing summary judgment?  The strategy employed will likely dictate what type of discovery is needed and the timing of discovery tools.

(J) Prepare Litigation Budget

   Your client needs to soberly address litigation costs, especially attorney fees.  The litigation can crumble to pieces if the litigation runs longer than the client’s financial resources.  A comparison among the potential damages, the client’s resources, and the potential litigation cost should heavily influence the conduct of litigation, including the discovery plan.

(K) determine timing of implementation of strategy (early MSJ?  Early trial?)

   Major milestones of litigation need diligent preparation.  Plans should be made for employing discovery tools well in advance of the planned milestones.  Discovery should focus on the issues needed for a milestone.  Naturally, one needs to err on the side of expecting the opponent not complying with discovery such that a motion to compel, with the long, drawn-out process, should be resolved before major milestones.  For example, if key facts are needed to support a planned motion for summary judgment, you need to secure that evidence before filing the relevant motion.

(L) cost/benefit weighing of discovery methods (e.g., find good vendors)

   Discovery vendors, such as court reporting companies, can be cost effective or unnecessarily exhaust your time, patience, and funds.  Often, you may know of good vendors and vendors to avoid.  If not, ask a colleague.  Choosing just any court reporting company can make a significant difference in your discovery expenses.

   If you plan on videotaping depositions, the cost can skyrocket.  A videotape of a deponent may help tell a story, such as displaying the witness’s credibility (or lack thereof), to support the extra expense.  However, excess expenses do add up and should be limited.

Frederic M. Douglas
Copyright 2010 Frederic M. Douglas.  All Rights Reserved.
fdouglas@cox.net

GC/MS Analysis - Verify or Compromise April 1999

Check out this SlideShare Presentation:

GC/MS Analysis - Verify or Compromise April 1999

View more documents from dougfrm.

8 Tips for Inventors Planning to File a Patent Application

Eight Tips For Inventors Planning To File A Patent Application


1. When you get your stroke of genius and come up with an idea, WRITE IT DOWN! You need to create a record of invention before going any further.

You should list:

(a) A full and complete description of your idea;

(b) The date (very important);

(c) Your signature; and

(d) Dates and signatures of at least two people to witness and understand your having invented your invention.



2. Don’t blab about your invention to anyone without a written confidentiality agreement.



3. Keep written records of your progress in developing the invention:



o Write down all modifications, experiments, alternatives, and other details.



o Keep copies of any emails, notes, letters, text messages or anything documenting discussions with others.

o Keep receipts for anything that you buy for your invention, including parts, software, consultant costs, marketing costs, advertisements, or anything having to do with your invention.

o Yes, these records must be in writing and dated.



4. Assess the marketability of your invention.

o Rule of thumb – total sales should be twenty times or more of the cost of inventing and patenting your invention. A suggested rule of thumb to determine whether your invention will sell well is that the total sales will be at least twenty times the cost of inventing and patenting it.





5. Do a patent search:

o Is your invention novel?

o What is the prior art?

o If you are improving on something that has already been patented, is your invention a new physical feature, a combination of prior separate features, or a new use of a prior feature?

o If you are improving something that has already been patented, is your invention not obvious?

o Does your invention produce a new and unexpected result?



6. Plan on filing your patent application sooner rather than later.

o Only one year grace period after public disclosure in U.S.

o Only 6 months in Japan.

o No grace period in Europe.



7. Consider the pros and cons of filing a provisional patent application:

(a) First things first – it is not a “provisional patent.” It is a “provisional patent application.” Do not trust anyone that does not bring up the fact that the provisional patent application never automatically becomes a regular patent application without doing something extra. There is no such thing as a provisional patent. Remember this; the patent office doesn’t even read your provisional application. They just take your money and stamp it with a date.



(2) Pro: Save money and time. Saves your place in line before competitors, while you can work on marketing, developing technology, and deciding whether to expend additional funds. Big companies often file provisional patent applications.



(3) Con: Why wait? If a competitor files a regular patent application while you have only filed a provisional patent application, then the competitor will probably beat you in getting a patent first. If your place is save in line, but the other person is ready to buy their ticket, you’re out of luck. To prepare a quality patent application, you have to spend a great deal of time stressing over many details. If you spend the time to do it right for a provisional, you lose nothing by filing a real application now.







8. Work with an experienced lawyer who is registered with the Patent and Trademark Office and does patent work for a living.