The Basics of Patent Search Law

A patent search law is a comprehensive search of already published, pending, and issued patents. It can also be called a Patent Search Registry. A patent search helps determine whether there is a patentable idea, so that prior to selling an idea, patenting it can be prevented. A patent search can also determine the kinds of situations in which an idea for a patented product may be infringed upon, especially when an idea is very similar to an already published invention. A patent search database can include the following:

A patent search law is usually initiated by a client or attorney who believes that there is an idea that is protected by patent law, or by someone who has some proprietary information to protect from competition. The attorney generally initiates the search by requesting a description of the invention. If the description does not describe the invention in detail, the client can explain the need for a patent search to the patent office. In most cases, the invention will be disclosed to the patent office without initiating a search. This is called “unambiguous disclosure”.

If the description provided by the client describes the invention adequately, then the patent application should be filed. The patent application should contain a description of the invention. It should include details about the method by which the invention works and how it works differently from prior art. The patent should also disclose the invention in a way where it will not be obvious to anyone familiar with the relevant subject matter. The patent should also disclose to the patent applicant (the one who brought the patent application) what conditions are needed to protect the patent rights.

The patent search law requires that prior art which would limit the patentability of the invention should be listed by the patent office. This requirement was put into place as a way to prevent patent applications which were obviously patentable but would infringe on other people’s rights. This can range from simple ideas to processes and materials. The client should discuss what he or she thinks the relevance of such prior art will be. If the patent applicant replies that it would be too much of a stretch, the patent applicant should move on to the next step. If however, the patent applicant agrees with what the patent examiner has come up with, the patent application should be filed.

Once an application is filed, the patent examiner will perform a search of the USPTO database to see what other patents are out there that might have a similar theme to the one being patented. The patent examiner will discuss the similarities and differences with his colleagues at the patent office. He may approve the patent application if he believes it is not so radically different from the prior art that it will clearly infringe on the rights of others. However, he may also reject the application if he believes the invention is not unique enough from those that have come before. This is called the first-past-the-pole rule, which essentially says that any new invention must fundamentally differ from those that have come before in some way.

There are times when a patent search law will allow a client to file an application for a patent even though it has already been rejected. This is called an ‘implied new patent’ which is considered by the patent office to be more likely to have future success than a regular patent application. However, it should be noted that a patent search law will not necessarily make a patent application successful. It’s a tool, not a guarantee.