Diligence is Recommended

As soon as an idea for a new invention takes shape, possibly while it is still in development, you should document what the invention is and when you invented it, and a professional evaluation should be made to determine what may be protected. The evaluation is based on a preliminary patentability search and is made by a registered patent practitioner. This evaluation should be quickly followed by a patent application.

Your invention time line is important, so it is best to file an application before any public exposure of the innovation in order to secure protection from encroaching competitors and to avoid losing potential rights in some foreign countries.

Document the Invention

It is important to establish evidence of what your invention is and when you came up with it. Sending a certified or registered letter to yourself, the so-called "poor man's patent", is not as effective as a written disclosure witnessed by a trusted individual or a disclosure submitted to a patent attorney. An effective approach is to submit a disclosure to a Registered Patent Attorney that describes and illustrates the invention so that a patentability search can be conducted. The Patent Attorney can confirm the date of receipt of the disclosure, if it is needed later to establish the inventor’s rights. Such evidence of your date of conception could be helpful if there is a dispute in the Patent Office after you file a patent application as to who invented it first.

If you plan on using our law firm for your search, you can use the Record of Invention for Client Use Form available on this website.

The Search Process

Next, a search of all previous public disclosures (prior art) including, but not limited to previously patented inventions in the U.S. and published U.S. patent applications should be conducted to determine if your invention has been publicly disclosed and thus is not patentable. A search of foreign patents and published foreign applications should also be conducted. While a search of the prior art before the filing of an application is not required, it is advisable to do so. A registered patent practitioner is a useful resource for performance of a patentability search.

Millions of patent documents are maintained by the Patent Office in its search library. A search of these records is conducted to determine whether the invention is the same as, or is an obvious modification of, prior inventions. U.S. Patent Examiners often cite both U.S. and foreign patent documents as a basis to refuse patent applications or limit an inventor's rights. The search should at least include a review of prior U.S. and foreign patents and published applications to the extent that they are available to the Patent Examiners at the U.S. Patent Office.

A Computer Search is Not Enough

Although online computer searches can be helpful, you should be aware of their limitations. They may not include consideration of all of the information available about issued U.S. patents and published applications since the beginning of the Patent Office. They may not include all of the foreign patent documents available to the Patent Examiners. They may not include all of the text and drawings that should be considered.

Furthermore, without the experience to know the right way to utilize what online resources are available, and how to evaluate the results in light of the legal tests of novelty and non-obviousness, the conclusions drawn from an online search may be wrong. The best place to conduct a search is at the Patent Office. There is no substitute for a professional search of the Patent Office records and a legal evaluation by a Registered Patent Attorney.

For information about having Litman Law conduct your patent search, see Patent Search by Litman Law.

The Patent Process

Following the patent search, you will decide whether to file a patent application. You will obtain "patent pending" status for your invention upon the filing a patent application. _________________________________________________________

To receive free information on patents or if you have any questions, contact us via our secure Contact Form. If you would like us to conduct a patent search for you, please submit your request via our secure Patent Search Request Form.