Patent Attorney and Founder
Hi, everyone! My name is J.D. Houvener, your host of the Bold Today Show, where you, the inventor, entrepreneur, or business owner, get your daily dose of inspiration to make the world a better place. We’re here in our 10-part series. This is part 2, looking at the patentability search opinion and digging a little deeper into all your options when you get ready with your invention. You’ve done all those pre-filing considerations, you’ve read the book, you’re serious about your invention. What is the next step when you’re ready to do a search? So yesterday, we talked about your option, of course, to not do a search at all, and whomp-whomp, that didn’t really turn out so well.
Today, we’re going to look at the next best option, which really is far from the actual solution, but it’s to do a search on your own. Okay, it’s better than nothing, but I want to go through the same criteria with you to really think through if doing your own search is the right thing for you to do.
Let’s start out looking at eligibility and patentability. By doing a search on your own, assuming you’re not a registered US patent attorney, you’re just not gonna know the law. You won’t know 35 USC 101, 102, or 103. And even if you were to go read through the law, really having a thorough understanding of cases that are being decided recently and looking at the nuances of patent eligibility, it’s quite a chore. It’s something that a professional spends their entire career doing, and it’s just not going to be easy to discern once you look at the results. If you go Google or Bing or go hop on the patent office website, USPTO.gov, while it’s a great start, you know, don’t get me wrong, doing a search on your own is fantastic, and it’s often times where I recommend to people if they’re not sure they’re ready to make a decision to hire us, but it shouldn’t be where it stops, right? That shouldn’t be where you say, ‘Oh, that’s good enough. I’m ready to file.’ You would want to go much further because you haven’t answered that question on the legal side: Is this patentable? Is this novel, non-obvious, and does it have utility under the technical terms of the law?
Let’s take a look at your time. You know, as an inventor, you’re busy, right? You’ve got to start a business or a new baby, you’ve got a new R&D research project, you’ve got to move this product, create the prototype, right, move it into the market. You probably know, wasting your time doing a search, trying to learn how to do patent searching is likely not the best use of your time. Your time is best spent where you have strengths, and you, as an innovator, as an entrepreneur, you’re a creative mind, right? And so, I think your time would be better spent being creative, coming up with the next best thing or improving your invention to the point where you say, ‘Yes, this is ready for the market.’
Certainly, money, okay. So, money, time is money in this sense, and if you spend 10 hours on your instead of on your business, but you spend it looking through the Patent Office website, learning how to do a patent search, going through the arduous process of starting that, it’s money out the door. Your opportunity cost is spent doing something that is not a strength of yours.
When you look at things like, you know, long-term value, doing a search purely on your own and trusting that, it’s going to be a very big issue when it comes to prosecution. Prosecution is a fancy word for when the examiner or the patent examiner does their own search. And you have to know that the examiner, that’s all they do all day long, is look at inventions in your specific technology area. It’s their job to prevent you from getting a patent if the invention is not new. They’re gonna search worldwide, covering countries that have publications and newspapers, journal articles, academic reports, and just media, right? Any kind of publication that’s translatable into the English language will be found. And so, by having a search done ahead of time that is equivalent to that examiner search, having a patent attorney do that, as we’re going to talk about later, is a much better alternative than you trying to do a worldwide search to try to be proactive and having that done ahead of time.
So, hope you’ve thought about finally doing your own search, and that you’ve thought about some of this feedback. And if you’d like to move forward and have a professional handle your search, go ahead and give us a call.