Tips for inventors on what to do after a patent search gives positive results.
So you did a quick search on the USPTO's website that yielded no results that matched my invention. Now what? Well, one of the challenges of the Internet is that we can be lulled into a false sense of security due to our assumptions and our eagerness to have a protected and profitable invention in the marketplace. When it's your invention and your resources, you want to know that the outcome is favorable before you go investing your time, effort and money.
Let's say that you invented a better mousetrap, went to the U.S. Patent Office web site at uspto.gov and conducted a Quick search (also known as a word search) for "mousetrap" for just the title field of issued patents, you would get about 25 issued patents listed. Doing a Quick search on "mousetrap" for all fields would yield about 150 issued patents.
If you entered "mouse" and "trap" for just the Title field, you would get over 40 issued patents; for all fields - about 3800 issued patents! Whoa! After examining all 3800, one would think that would constitute an exhaustive search.
But wait, there is more. What if the title and written specification did not use the word "mouse", but used the word "rat", "mice", "rodent", "vermin", "animal", or "pest" instead? You can have rat trap, rodent trap, pest trap, animal trap, vermin trap, trap for mice, bait station, lethal trapping device, baffled rodenticide box... the list goes on and on.
Your Quick word search might miss issued patents if they do not contain the words you are entering; one of which might be an exact duplicate of your invention. To make matters worse, the Quick search only accesses patents from 1976 to the present. That means that if your improved mousetrap was patented prior to 1976, it is invisible to a Quick search - not good.
What to do? Ah, there is the trusty Advanced Search, using patent classifications. A patent classification search goes back to 1790. Once again, you go to the Patent Office Web site and scan the patent classifications. Here it is: 043 - Fishing, trapping, and vermin destroying. Let's look there.
Subclass 58 - Traps, looks possible. An Advanced Search on ccl/48/53 yields about 90 issued patents. Are we through? Not yet. Your improved mouse trap might also lurk in the following classifications: 43/60, 43/61, 43/62, 43/63, 43/66, 43/69, 43/71, 43/74, 43/81, 43/82, 43/83, 43/85, 43/98, 43/114, 43/124, 43/131.
Don't forget the Design Patents. Classifications D22/18 and D11/119 may show prior art that disqualifies your invention. Then there are off-the-wall classifications, such as 206/466, that shows a mousetrap in a paper sack for convenient disposal.
Whew! You searched diligently in all these classifications. Are you finished? No. Don't forget the published patent applications on the uspto.gov web site. These count as prior art also.
In addition, a thorough prior art search examines foreign patents and non-patent prior art, which are not findable on the uspto.gov web site. You may need to go to fee-based sites for these or engage a patent professional.
Finally, even if you did find all the relevant prior art, there is still the need for a patentability opinion from a Patent Attorney or Agent. If you want to file a non-provisional, utility patent application, each of the claims in the relevant prior art should be examined carefully. Knowing the boundaries of the prior art is essential information for crafting your claims.
Also, a patentability opinion should address if your invention is obvious in light of the combination of two or more of the prior art (a common reason for rejection by the Patent Office).
Filing a utility patent application without a professional search and a patentability opinion is akin to setting sail over the ocean without charts, GPS, and a weather report.