Seeking Prior Art Before Filing Patent?

An anonymous reader asks: "I had a sort of out-there idea for computer hardware, and wanted to investigate design and manufacture. I figure the first step would be to patent the idea so that I am protected from it being stolen, while I confer with contractors about fabrication and circuit design. Does anyone know of ways to check for prior art, other than hitting up Google for something similar? I believe this idea is unique, but you never know what could have been out there, and I didn't know if there were any good resources on the web. Since the readership seems to be an inventive bunch, I think discussion on this topic may help more people than myself."

Comments

Re:Dont.

[deanj]

I agree here with this, as long as you don't have to spend a ton of money to get the thing filed. Otherwise, make your best effort and file.

Also, there are going to be a TON of people here that tell you NOT to file. Don't listen to them. This is your only way of protecting your idea that has legit legal recourse if someone infringes.

Attorney

[GigsVT]

You can search a list of all registered patent attorneys in the US here.

http://www.uspto.gov/web/offices/dcom/olia/oed/ros ter/

This is pretty much the only valid answer to this question, so we might as well shut the story down now.

Re:Attorney

[mdfst13]

One of the problems that arises is that the very act of searching can increase your legal liability if you are ever found to infringe on someone else's patent. If you pay a patent lawyer to search for you, then you aren't tainted by the results of the search. The lawyer's search will only be relative to your patentable claims.

Inventors should never look at patents. That's why we have lawyers. Lawyers act as an important abstraction layer in the process.

To try to give a concrete (albeit abstract) example:

You have a process that involves method A, which you think is patentable.

Your process also requires method B, which you think is too obvious to be patentable.

Someone has a patent on B.

1. If you search for stuff related to A but find B, you're now screwed. You can't proceed without purchasing a license for B.

2. If you hire someone to search for you, even if they find B, they will ignore it as irrelevant to A. They file a patent application, noting prior art. You can later amend the application if necessary.

Even if method A infringes on another patent, it is still possible to proceed. The buyer of your patent can purchase licenses for the prior art for method A as well as the license for method B. You get paid for your work.

Re:Attorney

[dtmos]

IANAPL, but I have spent several dozen years talking to patent attorneys on professional matters, so I'll answer the question anyway. Patent attorneys and agents are encouraged to correct any errors.

In the US, those that hold patents are entitled to sue for damages (e.g., payment for lost sales) resulting from someone infringing on a patent. However, there is an element in US patent law little-known outside the legal profession: If the infringer can be shown in court to have *knowingly* infringed (i.e., known of the patent yet infringed anyway), the patent holder is entitled to sue for triple damages. People attempting to file a patent are therefore frequently advised not to do patent searches, because if they are later sued over some related patent and evidence of their knowledge of the related patent exists as a result of this search (perhaps obtained via the discovery process prior to a trial), their potential losses are three times as great as they would be otherwise.

The use of an attorney, as the GP suggested, provides an abstraction layer to prevent this potential increased liability. The attorney can take the inventor's invention, do a patent search and advise his client accordingly. Since any professional communication between attorney and client is not subject to the discovery process, the client is protected against the potential triple-damages threat whether or not the client is made aware of the prior patent.

In my experience, attorneys will do one of two things: If the prior art is absolutely dead-on, and the attorney can see no way to obtain a patent in light of the art, he will not tell the inventor of the prior art that he has searched (which frequently includes hundreds of patents), and simply advise the client that his invention is not patentable. More often, however, the attorney will give the client the prior patent(s) and the two will examine the relevant claims together, looking for ways that the client's invention is different from that claimed by the earlier patent. This is a team effort, combining the inventor's technical expertise with the attorney's legal expertise. Identified differences will form the basis of the new patent application.

Note that all this applies to prior patents. The inventor is free to search prior art in the form of technical journal articles, conference proceedings, etc. without penalty, AFAIK, and is frequently advised to do so, since the USPTO certainly will when the inventor's patent application is examined. Nothing is more annoying than going through the hassle of applying for a patent, only to have the examiner reject it based on a passing reference in a Byte magazine article from the 1980s (not that I would know what that was like).

[dtmos pauses to don his aerogel suit] The antagonism between /. denizens and patent attorneys has always puzzled me. Like people writing software, the main function of patent attorneys and agents is to write precisely, using terms and phrases the definition of which have previously been determined. A well-written patent application is not unlike a well-written (albeit uncommented) computer program: It has a specific form and internal structure; everything there has a specific purpose and nothing is there that does not have a purpose. Nothing is duplicated. Variables are given specific names the first time they are used, and the names are consistent throughout; definitions are precise (if general). Like computer programs, they are written in a pre-determined and defined high-level language and, like computing, much of the hassle occurs when two different entities interpret the code differently.

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Get a Lawyer

[Shihar]

If you are serious about filing a patent, I would highly suggest consulting with a patent lawyer. Write up the patent as best as you think it should be, then go have a chat with an IP lawyer. They will be able to help you with wording it such that you grab up as large of a swath of IP as you can. Yes, a patent lawyer cost a few bucks, but it isn't like you need to higher them full time. You just need to consult with someone, get some information, then throw the finished product back to them so they can give it a once over.

If you are not terribly serious about this and just want to drop the $150 and get a patent, then at the very least go pick up a book on patentning. A lawyer is probably the easiest rout, but picking up a book is probably the cheapest. If you are serious and might want to try and make money off of this though, you really should talk with an IP lawyer. If nothing else, they can give you an idea of the overall cost before wasting time and money.

No, seriously, don't.

[TheoB]

Since people will sue you for infringement on the flimsiest of pretenses, you aren't really protecting yourself from the possibility of a lawsuit. On the off chance you see something similar to your idea which you dismiss as unrelated and you later get sued by the party who controls that idea, they can go after you for treble damages on the grounds of willful infringement. "But it isn't the same?" Doesn't matter: they're in a much stronger bargaining position when it comes to coercing you into a settlement.

There's a reason the legal departments of corporations order their engineers not to so much as Google for prior art. Hold yourself to the same standard; get yourself a patent attorney and let them take on the liability on your behalf.

(IANAL, but I deal with a lot of them. ;-)

Want the patent to be worth anythng? Hire a lawyer

[JoeShmoe]

Patents are something that you would be an idiot to cheap out on. Patent searches are important not just to find out if what you are trying to patent has already been patented because 99% of the time, no kidding, it has. You can't find anyone who makes the damn thing, or anyone who's ever written about it, but if it's technology-related, then you're going to find that five years ago someone with deep pockets fired the patent shotgun at everything related to your idea. The real important to patent searches is that they can help you find specific claims that can coexist with all of the other patents out there. By avoiding the landmines you find in other patents, you can figure out something that is a real "gotcha" moment that qualifies as novel and non-obvious to the patent office.

Each patent is really a bunch of little patents called claims. Patenting something like one-click shopping may have dozens of claims related to the interface, the backend processing, the operation, etc. The more claims you have, the more likely that you patent will infringe and the claims will be reject. The fewer claims you make, the more worthless your patent as someone can easily engineer around it. Given the cost of a patent from a reputable source ($8000-$15000 as high as $50000 depending on number of claims) why bother if you only want to patent something trivial?

If you are cheap, but want some level of protection, get a patent pending. You typically draw up some diagrams and descriptions, then pay between $500-$1500 to have a patent mill or patent lawyer file a provisional patent. This gives you the ability to boldly put "Patent Pending" on your documentation and it gives you a reservation in the patent line. Then you go out, market your idea and hope that a) anyone who thinks of stealing will be discouraged by the risk that your patent is granted and you come back and screw them or b) the money you make marketting your idea can pay for the costs to get the real patent filed.

If you are willing to invest the money, then spend a good amount to get a thorough patent search by someone who's actually there at the USPTO and can go through everything they have, not just what as been digitized. With some legal analysis and comparision of the existing claims to your idea, you can figure out what is missing and concentrate your patent on that.

-JoeShmoe
.

You can do some google searches, or pay one of those patent mills $99 to run basically the same type of keyword search but that's really not going to give you much of a guide. The patent doesn't generally matter, it's the claims. If you are trying to get a utility patent on a widget, it's worth thinking...how can someone

patent not necessarily the first step

[caliente3]

> I figure the first step would be to patent the idea so that I am protected from it being stolen...

For USA patent protection, you can file up to 12 months after the invention is first offered for sale or disclosed to the public. So it is possible to wait to see if the idea has some commercial merit before filing for a patent. You would lose the opportunity for international patents, but its my guess you can't afford those anyway. Another alternative is to file a provisional patent. That requires no prior art search, just a description of the invention. After filing the provisional patent, you have 12 months to file the acutal patent, plus additional extentions allowed by law. By using both a delayed application and a provisional application, you can end up filing the actual patent application 24 months after first public disclosure. Alternatively, if the provisional patent is filed prior to first public disclosure, it also protects your ability to seek international patents.

FYI, in the short term, use an NDA when working with anyone else to avoid public disclosure, which starts the clock on the various deadlines mentioned above.