Yes and no. There is no legal requirement to conduct a patentability search prior to filing a patent application. Indeed, if you are just filing a simple provisional patent application, it might be best to just file without a search. Doing so allows you to get a line in the sand with very little cost and relatively little effort. On the other hand, it is a very good idea to conduct a good patentability search before investing very much in the way of resources in R&D or patenting. If your idea is not broadly patentable, it is probably best to move on to another idea. The sooner you find that out, the better.
Probably not. There are innumerable good search firms, both in the U.S. and in foreign countries, but they tend to search only what you tell them to search. When you go through a patent attorney (or agent), the attorney is looking for more than just patentability. He/she is also looking for modifications to the invention to circumvent the prior art, and his search will often lead into useful avenues of investigation that would never be uncovered by a patent search firm. Many patent law firms use outside search firms to conduct their searches, but that is often because they do not want to be responsible if something is missed.
It can range from $500 to a thousand or more. Some chemical patentability searches can run $10,000 or more. A good search for most technologies costs at least $1500 including back and forth brainstorming. What’s the big deal? you think…. I google stuff every day. It’s outrageous to pay a lawyer to google something when I could do it myself! But a good patentability search is MUCH more than a simple internet search because it involves figuring out where the invention fits in with the evolution of the related technology. Note that the simpler an invention is, the harder and more expensive it is to search. The reason is that a simple idea will have a lot more prior art, and require searching in many more places.
You can, and should, do an initial search yourself. If you can find something very similar for free, you probably shouldn’t spend money having a professional conduct a better search. However, if your search indicates patentability, you should still have a professional conduct a more thorough search. Among other things, the professional searcher will search available foreign patents and applications which may be difficult for you to locate. So yes, you can save money by conducting your own search. But likely those savings will be eaten up by higher costs during prosecution.
The term “prior art” is used in the patent field to mean any information that is relevant to determining patentability and scope of a claimed invention. Prior art includes patents, journal articles, newspapers and other publications, as well as prior use, sale, and even offers for sale of embodiments of the invention.
In the United States, the scope of the prior art is determined by 35 USC § 102, which appears quite simple to read, but actually can get quite complicated in practice. There is a thick explanation on this in Chapter 2100 of the MPEP that delineates exactly what is meant by the terms “printed publications,” “on sale,” “public use,” “the invention,” “in this country,” and various other terms used in Section 102.
There is no duty to search for prior art before filing a US patent application, and no duty to search for prior art during prosecution. However, you do need to identify to the US patent office all non-duplicative prior art that you know of. Thus, if you know of three references that basically say that same thing, you are only required to disclose the closest reference. But be careful, the other two references might include nuances that should also be disclosed. Failure to disclose known prior art to the US patent office is unethical, and can be used to invalidate the patent once it’s issued.
Including a prior art reference in your patent specification is insufficient disclosure. All references of prior art must be submitted using an information disclosure statement (IDS). A blank IDS form can be found here. A listing of all patent forms can be found here.
Some law firms file IDSs with hundreds of reference, ostensibly to protect themselves from being accused of failing to submit an important reference, but possibly also to bury critical references from the examiner, or to justify high fees charged to their clients. After many years of abuse from such law firms, the USPTO now requires applicants to pay extra for large IDS filing. The form can be found here.
Perhaps. To be patentable, inventions must satisfy subject matter eligibility (35 USC § 101), be both novel (35 USC § 102) and non-obvious (35 USC § 103). Subject matter eligibility precludes from patenting claims to non-functional devices such as perpetual motion machines, and mere ideas. Novelty addresses whether the prior art contains the very “same thing,” which is usually a fairly easy hurdle to overcome. Non-obviousness addresses whether there is any teaching, suggestion, or motivation in the prior art, either in a single reference or in validly combined references, which would have led one of ordinary skill in the art to practice the claimed invention as of the filing date of the current inventor’s application. In view of the non-obviousness requirement, it is exceedingly common for an inventor to conceive of an idea that is new, but nevertheless unpatentable.
Old ideas are not patentable. It makes no difference whether the idea was previously patented, or whether the idea was patented and the patent expired. Nor does it make any difference whether the idea was ever embodied in a product on the market. To the extent that an idea is old, it is not patentable.
On the other hand, inventors often devise some new twist to an old idea, and that extra little bit is what results in a successful product in the marketplace. In those instances, the new twist can be patented.
Once a patent expires, the claimed subject matter falls into the public domain, and neither the inventor nor anyone else can recapture the lost patent rights.
This goes back to the concept that old ideas are not patentable. If an inventor wants to extend his patent protection, he must devise a new twist to the old idea, and then try to patent that new twist. In practice, this is very common. Inventors and companies often hold multiple patents covering many different aspects of the subject matter. Patent attorneys often refer to this as a “patent portfolio” or a “patent thicket.”
Probably not. Invention companies typically charge a flat fee (perhaps $20K) for searching, filing, and securing a patent. The problem is adverse incentives. The fixed fee incentivizes companies to write extremely narrow claims that are quickly allowed by the patent office. Unfortunately, the issued patents are then too narrow to have any commercial value. And their promise to list your patent on a special list, or advertise your patent to multiple potential licensees will come to nothing. The same goes for the various law office mills that file hundreds of applications each year. You are much better off with a smaller firm that will really take an interest in your invention.
Patent agents are licensed to practice before the patent office. In many cases, agents are every bit as good as the typical patent attorney, and in some cases, they are far superior.
Issues do sometimes arise with respect to the purpose for which a patent agent is performing a particular task. For example, agents can advise on the scope of a claim if such advice is used to determine whether or not to amend the claims. However, agents cannot, by virtue of their own license, advise on the scope of a claim with respect to patent infringement. Often the issue is moot anyway because the patent agent is working in a law firm under the auspices of a patent attorney.
The Manual of Patent Examining Procedure (MPEP) is the bible for examiners, patent attorneys and agents, and inventors. It provides guidance on what the examiners should or must do at each stage of prosecution. It covers topics from ethics to the searching, prosecution, and issuance of patents.
The MPEP also includes guidance directed at applicants and attorneys for matters outside of the prosecution stage, such as filing requirements, corrections of patents, and post-issuance procedures. The MPEP is thus intended to be a compendium of the USPTO’s examination practices, the patent statutes, rules and regulations.
The most commonly used version of the MPEP is the online version. It is also available in both PDF and HTML formats at USPTO.gov, although it is so large, and so often updated, that downloading a full version makes little sense.
The most commonly-used sections of the MPEP in practice are probably chapters 700 and 2100. The MPEP also includes a terrific glossary of patent-related terms, and others are available from private sources.
Appendix L contains all U.S. patent laws. Appendix R contains all of the relevant rules.
One would think that you could go to any registered patent attorney or agent to obtain good advise. But that just isn’t the case. The sad fact is that only about 60% of patent applications ever become patents, and only about 20% of those are ever even commercialized. Most patent applicants never make back the money they paid their patent attorneys/agents. One problem is that many practitioners are happy to file applications that have little to no chance of being issued, let alone having commercial relevance. A good patent attorney or agent will advise clients not to pursue an application after conducting an adverse prior art search. Another big problem is that many patent attorneys and agents were never properly trained. This can be especially true at large patent firms, where the high turnover of new associates can greatly reduce the incentive to provide adequate training. The best guidance is to read two books, White Space Patenting for drafting and filing patent applications, and Green Fields Patenting for building portfolios.