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Aug 11

The first thing the average inventor does when he or she first conceives of a new invention is to run off to a patent attorney.  This is done under the mistaken belief that the attorney is capable of producing all the “magic” that will culminate, eventually, in the inventor retiring to some tropical island and spending the rest of his or her days consuming My Tai’s with little umbrellas on top.  This approach is wrong on several levels.  This blog will deal with just one area, however: the patent search.

SHOULD YOU REALLY BE USING A PATENT ATTORNEY TO PERFORM A PATENT SEARCH?

The first thing an inventor should spend money on is a professional patent search, performed by a professional researcher.  It’s important to understand that not only must the person doing the research understand how to do an exhaustive search (which actually requires more library science expertise than legal expertise), but the researcher must also expend whatever time may be necessary to ensure that the search is as comprehensive as is reasonably possible under the circumstances.

Patent searching is a difficult and time consuming business.  It requires staff that are well-trained in general research, have a natural curiosity and inclination to “go the last mile” and, yet, do not demand a king’s ransom in order to do a good job.  While capable and competent patent attorneys can certainly do, at least, as good a job as a professional researcher, there is a significant disparity between what professional researchers charge (or the level at which they’re compensated) and what a typical, qualified patent attorney would charge.  Assuming an average of six hours per search, and compensation level for a professional researcher at $25.00 per hour (not including overhead and other operating costs) versus a professional fee level of $250.00 per hour for a qualified attorney, you can easily see that the cost of having a good patent search performed by a professional researcher versus one performed by a qualified attorney is considerably less expensive (i.e., $150.00 versus $1,500.00).

Some attorneys will claim, however, that they can perform a search for $500.00 to $750.00.  If so, then you need ask yourself the following question:  who’s actually performing the search???   What will the search include (more on that point below)?   Is it the attorney, who normally bills at $250.00 per hour, or is it some low-level, lower-paid subordinate (e.g., a paralegal, secretary or even, junior lawyer in the firm) that’s actually doing the research.  If so, then what are you actually getting?  Remember, a professionally done patent search requires three things: expertise, a willingness to be exhaustive and a lot of time.

WHY IT MAY BE BETTER TO SEPARATE THE PATENT SEARCHING PROCESS FROM THE “PATENTABILITY OPINION” PROCESS

A professional searcher merely performs the patent search and issues a patent search report; it’s not his or her job to provide an opinion as to whether or not you should proceed with a patent application.  Rather, it’s the patent attorney who then gives you an “opinion” as to whether or not you should try to file for a patent.  These are two distinct processes that should not be blended together; first the patent search and its’ results, then the patentability opinion.

An important point to consider here is if an attorney performs a patent search, what will the search include?  Will it include an international search as well as a product search?  A comprehensive search always includes a complete search of the U.S.P.T.O. databases, an international search and a product search.  This can take hours.  When the search is done, you have the chance to review it yourself.  Depending on your skill level, you may be able to determine if you should talk to an attorney or not.  There are times when the results of the search clearly indicate that there is just too much prior art to move forward.  Some engineers and serial inventors are very capable of going through their own search results and drawing conclusions.  If you have paid for an attorney to do the search and the “opinion” at the same time, you have wasted a lot of money (possibly thousands of dollars).

Second, while ethical attorneys will never engage in anything so reprehensible, from past sad experience with clients, we do know that there is the potential for a conflict of interest when you use the same attorney to both perform the search as well as to write the patent application.  A professional researcher has nothing to lose by finding prior art that could dissuade you from continuing to pursue a patent. 

IMPORTANT STEPS AFTER YOU’VE RECEIVED THE RESULT OF THE PATENT SEARCH

Once you’ve both received and reviewed the search results yourself, you should organize your questions and decide which Intellectual Property attorney you want to use.  A good attorney will ask whether or not you’ve had a search done and if so, he or she will want to review it.  The attorney will also ask you whether or not you intend to have a prototype produced and, if so, who will be building it.  Lastly, a good attorney will also ask you whether you’ve determined that you can make your product at a price the consumer will pay.  It’s important to remember that, once you’ve selected an attorney, you should have that attorney both review the results of the search and, where there does not appear to be a problem with proceeding, write your patent application as well.

Last but not least, in spite of what many people believe, neither attorneys nor search companies are infallible when it comes to “turning over every rock” i.e., uncovering every single imaginable relevant patent.  Intelligent attorneys and well-managed patent search firms have the same disclaimer about not being able to guarantee that every relevant patent will be found.  Paying more to have an attorney search doesn’t eliminate this standard industry disclaimer.

Inventors frequently want to hire one person who can do everything for them.  Bad idea.  Hire the right professional you need to do the right job at the right time.