Law Office of Alicia Porter

I frequently get the question by prospective clients on why they should pay me to do their search. After all, they know their product, they designed their product, they know the vocabulary of one skilled in the art of their invention, why does a knucklehead like me come in and have to learn everything they know? The inventor has limited resources and wants to protect what resources they have – why should they pay me?

The short answer is my skill set. While an inventor may see their invention in one light, I may see it in another. Here’s what I mean…..

A client may come to me with a fantastic idea for a new pen, which they have created that shoots out three colors of ink simultaneously, including invisible ink (please note, I am COMPLETELY making this up off the top of my head). The inventor has looked up triple ink pen as the search terms, and hasn’t found anything. Bingo! The inventor believes it’s ready to patent.

There is more than one way to search for an item. Using the pen as an example, you might start looking at writing apparatus. Then you’d go to the USPTO Manual of Classifications, and you’d start with subclassification 401, and start to look for the correct classifications. A quick search can help you narrow down the classifications you might want to look at, but it can be tedious. Then you go to the templates. Then you start looking at other search engines, such as Delphion, Google patents, and other search engines. Then you start looking at the foreign offices. The point is, that you need to make as thorough a search as possible to see what is out there. Your search results help you advise your client on whether it’s worth pressing forward on the idea, and your search results are incorporated into your application, as you want to give a thorough search to the examiner to facilitate the speed of getting a patent. In short, a search by a patent attorney or agent can be VERY helpful.

Another option is an independent searcher to do a second search – the advantage to this is to have two independent set of eyes looking at the concept and trying to find out any previous patents or literature regarding the client’s invention. Depending on the market share that the invention can capture, this can be a really good strategy to prove that your idea is so unique that you can make a significant niche with your idea.

Allright, I admit it…. I am a Quick Search junkie on the USPTO web site. It’s not that I have this overwhelming desire to spend extra hours going through patent by patent, or that I have this sick and twisted desire to use Boolean search phrases such as “andnot” or to count characters( after all, one cannot have more than 1475 characters in each search – I know from personal experience).

But I like Quick Search, as it’s the closest I am ever going to personally get to something like “Deal or No Deal”. It’s fun to tweak with the phrasing a little bit, to see if you can eliminate more of the numbers in the search to make it more reasonable. For example, add two terms and exclude two terms, and your generic search went from 1400 hits to 250 hits. But it’s also kind of fun to see what other words get brought up during Quick Search, and then wondering “hey, can my client’s idea be used in that way? Perhaps I should check out the application”. What can I say, other than it’s a fun little tool to help figure out which classifications are really the place to focus my search?

And who knows, I might get lucky, with the right buzz words and narrow my search to 10 patents or less…

Back again to the places to search for patents that may affect a patent application. A good patent application should include a proper search of the foreign patents that are available as well.

The big ones are the European Patent Office and the Japanese Patent Office. The WIPO web page (World Intellectual Property Organization) is fantastic as well.