by Christie Bell, President Christie Bell, Inc., Certified Licensing Professional, and MTIP SBIR Consultant
You discovered a unique solution to a problem. It might even be the next big thing! While it’s tempting to jump head first into realizing your idea, take a step back before making a potentially costly mistake. If you plan to make, use, or sell your invention, according to Title 35 U.S. Code § 271, you could be liable for infringement if there is “prior art” or evidence that the idea is already in existence. Research into prior art isn’t straight forward, but you can get a preliminary idea before deciding to hire a patent attorney to conduct a professional patent search.
A thorough patent investigation starts with a search by you, the inventor. It’s not enough that Walmart doesn’t sell a version of your solution, or that a Google search revealed no similar products. In his Patent Search 101 Tutorial, Gene Quinn, founder of IP Watch Dog®, clarifies two critical reasons to search for patents that correlate with your idea., You will: 1) familiarize yourself with prior art; and 2) become informed on prior art so you can focus on what makes your invention unique.
Start your search at the United States Patent and Trademark Office (USPTO). The USPTO is the U.S. Department of Commerce agency that issues patents to inventors, and trademark registrations for product and intellectual property identification. Begin your USPTO patent search process by reviewing the office’s help section or viewing a comprehensive video presentation on how to conduct a patent search.
In addition to USPTO, try Free Patents Online (FPO) which was developed to make patent research faster, easier, and more accessible. The FPO database is funded by advertisers so expect to tolerate sideline product pitches. Paid subscriptions are available for advanced services such as AcclaimIP, FPO’s patent landscape and analysis tool. You can customize search criteria for US Patents, US Patent Applications, European Patents (EP), as well as abstracts of Japanese, World Intellectual Property Organization (WIPO), and German patents. FPO’s search engine is driven by keywords and patent hits are provided in the form of an easy-to-read table with clickable links to patent summaries including the patent and application number, abstract, inventors, filing and publication date, assignee, patent images and more.
Google Patents, another free resource, allows for the search of patents from around the world, plus technical papers and books. Results include images, downloadable PDFs and citations. The Google Patents database includes full-text documents for the United States, 21 additional countries and WIPO. The search input options include entering a patent publication or application number, freeform text, and inventor or assignee names. Rare among free patent search services, Google Patents allows for the entry of large text blocks to run their Prior Art Finder keyword extractor which will render suggested search terms.
After you’ve completed a comprehensive online search, it’s tempting to stop there and move directly into the patent application process. Not yet. No matter how online savvy you are, you need to protect yourself from potential costly mistakes by hiring an IP attorney to perform a professional patent search. Your intellectual property (IP) may well comprise the backbone of your business. It’s vitally important that you take the necessary precautions to ensure your IP is protected from others making, using or selling your creations. Conducting a preliminary search on your own is an essential first step and will provide a solid basis for any IP attorney you might hire. Contact the Montana Bar Association for information on IP lawyer referrals to ensure the help of a legitimate and knowledgeable professional. This approach will not only protect you from infringing on other inventors but also provide the needed information to tease out why your invention is truly unique. Knowing exactly what sets your idea apart from related inventions and expertly illuminating its distinctive qualities will increase your chances of filing a successful patent application.
Download MTIP’s Innovator’s Guide to learn more about how you can protect your inventions.