Want to save some money and some frustration with a lawyer? Do some of your patent legwork up front with a DIY prior art search.
What is Prior Art?
Prior art is any article, publication, product, issued patent, or patent publication that’s publicly accessible before the filing date of your patent application (or up to one year before, with some caveats).
In terms of patent determination, prior art could very well be something out there that exactly mimics what your invention is trying to do. But even where there is not an exact match out there, you can still get a patent rejection. A patent examiner may find something that’s close enough to your product that they do not feel there’s enough of an inventive leap between what’s come before and what you’re trying to patent.
In these cases, an examiner will put together what’s known as an “obviousness rejection.” These obviousness rejections usually include an examiner picking two different pieces of prior art that are close enough to your invention that, when combined, disclose all aspects of your invention.
Why is a Prior Art Search Important?
To avoid these rejections, and make the most of your time with an attorney, it’s important that you do some prior art searching, ideally before you hire a lawyer.
Don’t think that “no one’s ever done this” or “no one else in the market is doing this.” There’s a very good chance that someone has done something very similar to what you’re trying to do and, if you’re only looking at the marketplace of products, you may be missing someone who’s currently out of business, or never got started, but who already tried to do exactly what you’re doing (or something very similar).
With a prior art search, you can look for all the hidden ideas that may result in a patent rejection, including the failed ideas, those that never made it to market and those that didn’t last long on the market. With a stronger understanding of the prior art in hand, you can more effectively convey the uniqueness of your idea to your patent attorney — for instance, why your invention will make a feasible or profitable product where others have failed in similar attempts to solve the same problem.
Tools to Use for a DIY Prior Art Search
The first thing you should start with is Google. Just see what kinds of products, articles, and academic papers are out there that might impact your invention or business. Dig deep. Look for the mom-and-pop shops and the tiny businesses.
Then, move on to patent searching. Google Patents is one of the easiest to use interfaces I’ve found and it’s even more useful than the patent office’s own interface. Google is constantly adding upgrades to the system and making it more and more efficient. Additionally, Google Patents is free to use, as is the U.S. Patent Office’s search tool. After performing searches using keywords, and especially a variety of synonyms of keywords, copy the abstract of a close prior art hit and paste this into the search field.
In general, your DIY prior art search should take five to 10 hours, and will save you thousands of dollars.
Tips for Your DIY Prior Art Search
The right mindset
Already be in the mindset that you’re going to find something. If you assume you’re not going to find your invention already out in the world, then chances are, your DIY prior art search will fail.
Even if you do find something, it doesn’t mean you can’t go to market. It just means you need to identify the reasons why your product will succeed and the existing attempt(s) failed. Doing a prior art search can actually help you identify important marketing distinctions in your own product or help you brainstorm improvements to your own idea. This makes your resulting patent more valuable, as you’re forced to ensure your product stands apart in a significant way.
If you start with this mindset, you have a much better chance of entering the right search terms and putting in the correct amount of effort when it comes to your prior art search. You really don’t want to talk to a patent attorney without some close prior art in hand.
The right words
Keep in mind that, even within a given industry, engineers describe inventions in vastly different ways. Attorneys, in many instances, come up with their own terminology within a patent. Use a thesaurus in your DIY prior art search to find instances of your invention being described in unique ways.
What to Do When You Find Similar Prior Art
Maybe your general concept has already been achieved and patented, but that doesn’t mean that the details to making it a winning product have been patented yet. That’s a distinction to think about. Again, just because you’ve found something during your prior art search, doesn’t mean you have to give up on your idea — you just have to make it better.
Once you’ve done some patent searching (whether or not you’ve found something) and you’re looking for your next steps, it’s time to talk to a patent attorney. If you come to an attorney having done your due diligence with the prior art search, you’ll have easily saved thousands of dollars of attorney fees, and more effectively described the heart of your invention.
Questions about protecting your intellectual property? Schedule a consult.