Patent Search Options
Clients often need to know, with a reasonable degree of certainty, how likely they are to get a patent. Unfortunately, the patent system can never give any absolute guarantee that an idea is completely new, but if diligent searches are conducted and nothing damaging is found the level of confidence will progressively increase.
FILING A BASIC PATENT APPLICATION
As a general rule, we conduct a preliminary appraisal of any new idea before proceeding to file a patent application. Although this will sometimes confirm that an idea is not worth pursuing, the limitations of such investigations mean that we cannot give any guarantee of patentability. Very often, people just want to protect their idea for the initial period of twelve months and they do not want to incur additional search fees. This is therefore still quite a popular choice.
FILING AN APPLICATION WITH A SEARCH REQUEST
Another option is to request an official search when the application is filed. The cost of searches conducted as part of the patent application process are heavily subsidised and this is quite an attractive route, but the down side is that such searches are not given a high priority and it often takes nine months or more for the search results to come back.
We can commission a commercial search by the Patent Office or a firm of professional searchers at any time, before or after a patent application is filed. The results are available very quickly (approximately two weeks) but the fees are charged at a commercial rate. It is also important to appreciate that even commercial searches conducted by the Patent Office cannot take the place of the statutory searches which must be carried out before a patent can be granted. The cost of a commercial search must therefore be added to the normal cost of obtaining a patent.
THE STATUTORY SEARCHES
With a few exceptions, at least one search is normally carried out by the patent examining authorities before a patent is granted. As a general rule, the search results are usually issued fifteen months after the initial application is filed (assuming or course that the Application progresses beyond the initial twelve months.) As discussed above, if the search fees are paid at the time of filing the search results will normally be obtained earlier.
A FINAL WARNING
It is worth repeating that although searches conducted by Patent Offices and commercial search organisations are very comprehensive it is impossible to look at every technical document which has ever been published. There is always a small risk that something will come to light at a late stage, rendering the patent invalid. Another point to bear in mind is that the question of whether a particular document is relevant to an invention is often a matter of opinion. Searches sometimes show that an idea is not patentable, or indicate that an invention is probably new, but there are also many cases where it is very difficult to predict whether Examiners will view the differences as being sufficient to merit a patent.
© Craske & Co., 2003
Last updated: 27 December 2010