You may approach a search in three ways:

Let’s look at all these options.

Going through a lawyer to search patents will cost the least amount of time and the most money. Attorneys don’t conduct their own searches; they don’t have the time, or skills, in most cases. They are too busy drafting claims, prosecuting patents, going to court, and fulfilling other duties. This is no different from dentists who no longer find it cost-effective to clean teeth, or physicians who don’t give vaccinations because their time is better spent on services that can generate greater income.

Patent attorneys employ professional researchers. You hire the attorney, and the attorney gets someone to conduct the search. Then the attorney adds a mark-up to the search bill, sometimes as much as several hundred percent. Many lawyers cloak this in the term handling fee. To save this extra expense, some inventors hire their own researcher or do the search themselves.

Most patent attorneys don’t render an opinion based on a search conducted by anyone other than their own searcher. I’ve always told my lawyers that if they wouldn’t accept the work of my search firm, or searches done by myself, I would go elsewhere where such work would be acceptable. I figure I’m paying the bills, and if I’m willing to take the risk, the lawyer shouldn’t have a problem. My lawyer agrees to this system.

I don’t go through a patent attorney because I see no reason to pay for a legal opinion. If the search results show no prior art in my field of invention, I don’t need an attorney to tell me the coast is clear. Conversely, if a search reveals prior art that’s spot on my invention, I don’t need an attorney to tell me my idea has been done before.

I might, on the other hand, hire an attorney to help me end-run an existing patent through the use of language in the application.

If you hire a lawyer, get a quote in advance. The fee will be based on how all-encompassing you want the search to be.

If you want to save lawyer fees and mark-ups, consider going directly to a patent search firm. Searchers are best found through inventor grapevines, inventor associations, or university intellectual property departments. In larger cities, you can also check the Yellow Pages under “patent searchers.” But be careful not to fall into a trap set by some disreputable invention marketing organizations. They list themselves in the phone book under “patent searchers” with a toll-free number. This is another way they hook unsuspecting inventors into service contracts. Get all the facts up front. See Chapter 2 for how to identify disreputable organizations and avoid being ripped off.

Some reputable searchers ask for money up front if they don’t know you. This is understandable. Just be sure you get the cost of the search beforehand, and get—and check—references.

Ask for a rate sheet and then get on the phone and discuss the exact services you need. Costs vary depending on the complexity of the search. Electronic, chemical, biological, botanical, and medical searches are often more expensive than a mechanical search. In most cases, there will be incidental charges for copies, phone and fax, online fees, and shipping and handling of your materials. This is all standard.

Most important, ask if the searcher is experienced in your field of invention. If you’re searching a chemical patent, don’t hire someone skilled in mechanical devices.

Unless you have a history with a search firm, ask for a letter of nondisclosure before you sign on.

The cost to search a utility patent in the Washington, D.C., area runs between $500 and $1,000. It is roughly $100 per hour for a compentent search. Once the search has been completed, if you want to obtain an opinion on the patentability of your invention, add the cost of your lawyer. If you need to show a prospective licensee that your invention has a good shot at a patent or that it’s unlikely to infringe on an existing product, a letter from competent patent counsel may do the trick.

We use Greentree Information Services (GIS), a patent search boutique, located in Bethesda, Maryland. George Harvill, founder of GIS (301-469-0902; [email protected]), has been doing our work for over 15 years. You might want to contact GIS as part of your comparative shopping. There’s no one more skilled or honest in the business than Greentree.

If you decide to do the patent search yourself, you have several search methods available:

The USPTO Public Search Facility. The USPTO operates a Patent Public Search Facility located in Alexandria, Virginia. Here every U.S. patent granted since 1790 may be searched and examined. Many inventors like to make at least one pilgrimage to the Patent Public Search Facility. It’s located fewer than 15 minutes from National Airport by taxi; Metro Rail serves it off the Blue and Yellow lines, King Street Station; and several hotels are within walking distance, so it’s easy to get to and around.

Upon your arrival, the USPTO will issue you a SMART card ID badge. These badges are required to pass through security access checkpoints in the Public Search Facility. Badges are obtained from the USPTO Security Service Center in room 1C51 on the lobby level of the Madison Building at the Alexandria campus from 8 A.M. to 4:30 P.M. Visitors must present a valid photo ID to be issued an access badge. I recommend you double-check the hours of operation by calling toll-free 1-800-786-9199 or locally 571-272-3275. Depending on where in the facility you want to search, the Patent Public Search Facility is typically open from 8 A.M. to 8 P.M. It’s closed weekends and federal holidays.

Computer workstations enable you to search for patents issued from 1790 to the current week of issue using the patent examiner systems web-based Examiner Search Tool (WEST) and Examiner Automated Search Tool (EAST), the USPTO website, and related applications. Full document text may be searched on U.S. patents issued since 1971 and scanned images of each page from 1920 to 1970. U.S. patent images from 1790 to the present may be retrieved for viewing or printing. Some foreign patent documents may be searched using EAST and WEST. On March 15, 2001, the USPTO published its first set of patent applications under the American Inventors Protection Act, a 1999 law making far-reaching changes to the U.S. patent system.

“Publication of patent applications before a patent is granted is one of the most fundamentally significant changes to the U.S. patent system in over 100 years,” said Nicholas Godici, former acting Undersecretary of Commerce and acting director of the USPTO. “Published applications will become an important reservoir of reference materials for patent examiners and a valuable resource to the public as the volume of published applications increases.”

Published patent applications may be viewed as images or text searched at www.USPTO.gov/patft/index.html. New applications are published every Tuesday. Publication of patent applications is now required for the vast majority of filings made on or after November 29, 1999. Publication occurs after expiration of an 18-month period following the earliest effective filing date. The earliest effective filing date may be influenced by a number of factors, including foreign filing. Previously, U.S. patent applications were held in confidence until a patent was granted, while other major patent offices around the world have a history of publishing patent applications.

If you’re going to file for foreign patents, you need to advise the USPTO of this when you apply for a U.S. patent. If you have no intention of going for foreign patents, the USPTO will keep your application under wraps until a patent is awarded, if this happens.

The Scientific Library of the Patent and Trademark Office. Near the Patent Public Search Facility is the Scientific Library of the Patent and Trademark Office, located on the ground-floor level of the Remsen office building. The Scientific Library makes publicly available over 120,000 volumes of scientific and technical books in various languages, about 90,000 bound volumes of periodicals devoted to science and technology, the official journals of 77 foreign patent organizations, and over 12 million foreign patents. The hours are from 8 A.M. to 5 P.M. Whether you do a manual or computer search, be sure to look through every possible class and subclass the patent office personnel suggest or you feel are pertinent, and then add some for good measure.

Internet search. You can also conduct searches pro se. Go to www.USPTO.gov and have at it. IBM also hosts a search site, www.ibm.patent.com, and Google facilitates patent searching at www.google.com/patents?hl=en.

To search foreign patents, there is only one free site. It is run by the World Intellectual Property Office (WIPO) at pctgazette.wipo.int/eng. The site provides access to various intellectual property data collections hosted by the WIPO, including Madrid, PCT, and JOPAL (nonpatent reference) data. The WIPO also supports fully search-able information retrieval and display. Access to the Digital Library is available to the general public free of charge. The services are operational and are updated on a daily, weekly, and monthly basis, respectively.

Be aware that these databases are intended for use by the general public. Due to limitations of equipment and bandwidth, they’re not intended to be a source for bulk downloads of USPTO data. Bulk data can be purchased from the office at cost. The USPTO monitors who uses these databases. If someone generates an unusually high number of daily database accesses (e.g. searches, pages, or hits), whether generated manually or in an automated fashion, the USPTO may deny access to these servers without notice, according to Pamela Rinehart, Manager, Research and Administration and Patents Webmaster.