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Martin Fruitman: What to know when doing patent research

It's The Law

Posted: June 11, 2010 4:55 a.m.
Updated: June 10, 2010 3:15 p.m.
 

While the goal of a patent search is to find the patents that are most similar to the invention, different searchers might consider different patents as the most pertinent ones for any particular invention.

There are thousands of patent-search subclasses into which patents are indexed, and there are hundreds of patents in each subclass. Any decision regarding the significance of a patent to your idea is a very subjective process. A searcher and a U.S. Patent Office Examiner may not always reach the same conclusions.

Furthermore, searches done by computer are likely to differ between different searchers. Since most computer searches are based on searching for words or phrases, all that is required to get different results is to choose different key words.

Also, although professional patent searches are performed with great care, it is always possible that a pertinent patent may not be found, because there are inherent possibilities for errors in the process.

Perhaps the most important problem is that there are relatively few patent applications in the search files. Since patent applications are confidential until at least 18 months after filing, searchers cannot find applications that were filed in the last year and a half.

This office once had a patent rejected because of a patent which issued only five days after the patent search which preceded our application.

It should also be noted that although there may be foreign patents that are pertinent to an invention, foreign patents are not checked in the usual patent search. Foreign patents can be searched, but this may be of limited value because foreign patents are not completely translated in the available files.

Nevertheless, a patent search is definitely worthwhile, because at nominal cost it provides a reasonable indication of the patentability of the invention. It is therefore a real aid in determining whether a patent application should be filed and approximately how much protection a patent can provide.

Martin Fruitman is a Valencia patent attorney. He can be reached at (888) 769-4332. His column reflects his own views and not necessarily those of The Signal. "It's The Law" appears Fridays and rotates between members of the Santa Clarita Valley Bar Association (www.SCVbar.org). Nothing contained herein shall be or is intended to be construed as providing legal advice.

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