Consider these 5 alternatives if you have no experience looking for prior art
Comparing your search with the results of a professional search will polish your ability to conduct reliable future searches.
BY JACK LANDER
Searching for prior art (existing patents) is a pain in the butt for most of us. I have found it to be so after trying many ways to make it easy and pleasant.
If you do your own patent search without much experience, you probably will not find the prior art the patent examiner will find during searching. This will result in the rejection of your patent application if you file it on your own.
OK, so you’ll have a patent attorney do your search, thinking it will give you a definite answer as to whether conflicting prior art exists. Such a search will decrease your odds of your patent application rejection, but still with no guarantee.
Even if the search turns up the entire prior art that could hurt your chances of getting the patent, there may be a difference of opinion about whether such prior art disqualifies your application. In such cases, you need a patent attorney to present your argument. And in any case, the patent examiner has the final word on the potential of prior art to affect the decision to accept or reject your application.
At that point, you may have spent several thousand dollars to find that your invention is not novel and not patentable.
Options and observations
So, back to the beginning. Before you do your own search, consider these five alternatives:
- Hire a patent attorney. Order a search and patentability opinion. If the result is favorable, hire the attorney to prepare and file your patent application. (The typical procedure.)
- Study a book on how to search, and proceed to a professional search whether or not you find potentially disqualifying prior art from your own search. Give the results of your search to your professional searcher and ask for comments.
- Enroll in a patent preparation and filing course such as Patent Hacks. I have no direct experience with this course, but from the materials offered on its website I believe it could be very helpful.
- Study a book on how to write and file your own patent application, then proceed.
- Order a search and patentability opinion. Assuming there is no patent found on an invention like yours, proceed to produce and market your invention.
Before considering any of these alternatives, consider the pros and cons.
Option 1 assumes you have the money to pay for the professional search ($1,000 to $2,000), for the professional patent application ($5,000 to $15,000) and that you have carefully considered the probability that you will be able to market your patent, or sell your product if you decide to produce and market it.
Regarding Option 2, comparing your search with the results of a professional search will polish your ability to conduct reliable future searches. Nolo Publishing’s 7th edition of “Patent Searching Made Easy” is available on Amazon. Don’t buy older, used editions. They are much cheaper but probably don’t include current information.
As for Option 3: The price to enroll in Patent Hacks is $500, but this is reasonable if you learn enough to avoid hiring searchers and patent application writers. Consider that the typical cost of one professional search is about three times the cost of the Patent Hacks program—which includes 500 examples, 50 guides, 30 templates and 200 definitions.
Option 4 requires learning and practice, but you will also have the “hand-holding” of the patent examiner. Most examiners are willing to explain why they have rejected your application and suggest ways for you to improve it. Amazon stocks Nolo Publishing’s excellent book, “Patent It Yourself,” which I have owned—and used several editions over the years.
As for Option 5, you don’t need a patent to proceed to manufacture. However, you run the risk of infringing on a still-in-force patent. (A utility patent has a 20-year life.)
What if you infringed?
Infringing will not result in solitary confinement. There is a good chance you will never hear from anyone. Well-established businesses worry about major competitors, not about hunting down very small businesses using one of their patent claims in a way that doesn’t cut into their profit.
If you do hear from a patent holder who says you’ve infringed his or her patent, typically you receive a notice from a lawyer advising you of your infringement and what action you take. At worst, you will probably be advised to stop producing and meet with his or her client at the attorney’s office. Such meetings generally are not hostile but are, in essence, bargaining sessions.
If you are a small producer, the cost of permission to maintain your use of their patent claim may only be a royalty fee that is affordable. At worst, there may be a demand for past royalties owed. The smart strategy is to provide for this by setting up “infringement self-insurance”—a bank savings account—and depositing self-imposed royalties based on, say, 10 percent of your sales. (Most royalties are lower than 10 percent.)
At the bargaining meeting, ask your adversary what percentage of sales he or she would have charged if you would have known about the patent with a claim that you have used in your invention, and would have agreed to pay royalties. Don’t reveal that you had set your self-imposed royalty rate as 10 percent of sales. The usual royalty is around 5 percent.
If all goes well, you’ll probably not be contacted, and you’ll end up with a lot of money from your “infringement self-insurance” bank account.
Hmmm. How about a financial partnership with me? I still have a ton of ideas, some of which may be patentable.