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By J.D. Houvener
Patent Attorney and Founder

did you know that one of the biggest mistakes you can make when you file your patent application is having not done a patent search to see if your invention already exists hi I’m JD hoovener owner and founder here at bold patents Law Firm I’m also a patent attorney registered at the USPTO today we’re going to dig in and talk about what things you need to have in place before you file your patent application at the USPTO so doing the research I know as an inventor entrepreneur you’re probably very excited to just get your product out in the world start making money with it right well you got to make sure you do the diligence first like anything that you’re going to roll up your sleeves and invest your time and energy in you need to make sure you have done the research uh and so with the patent law the way it’s set up is you submit an application it goes to the patent office it gets assigned to an examiner an examiner they spend all day right all day for probably years working in one specific area of technology and so they know all of what’s called prior art prior art is the term used for anything that’s related to your invention that was published before you filed your application so they’re aware of all of that including the applications that were submitted by competitors of yours or other inventors that are out there filing let’s say just yesterday now those aren’t public knowledge those aren’t something that you or I could find if we went and did a Google search or a patent search but the examiners have that information so long story short the examiner’s job is to make sure that nothing gets through that isn’t novel non-obvious and has utility so that’s their job before you spend the time and energy it takes to write a really thorough patent application and get it submitted doing that research ahead of time that is what we’re talking about today so how do you do a solid research how do you make sure you look and put yourselves in the shoes of the examiner to look at all the prior art the right way first and foremost it starts with the invention if you have a you know sloppy rough idea of what your invention maybe it’s even still the idea phase well that’s what you’re going to get on the other end okay garbage in garbage out meaning the results of that search yeah it might have been done before but we weren’t really sure and why not but because the specifics right the structure the materials the how your invention works it wasn’t really laid out and so the nuances the novelty perhaps wasn’t even discovered or articulated so the search results won’t be clear having a well-articulated well-defined invention is the starting point so having what we call an invention Disclosure document okay or just didn’t mention disclosure which is a written description of what it is that you’ve invented along with flowcharts drawings even sketches we’ll help put together the right picture you need to have a professional research done to see if it’s been done before what it is is important so that’s step one step two is to have a research that is thorough okay not just looking at what’s been published out there on Google pads what’s available on USPTO not stopping with just one search engine but looking at a multitude including the world intellectual property office also the USPTO Pat ft system these are all research databases that are important the other side of the coin is it’s not just patent documents it’s anything published ever in any language anywhere in the world so that’s a huge ask now you can’t just go start looking and Googling and researching across different libraries or institutions you have to have a measured process for this and so what’s nice about the patent system is they have developed What’s called the classification system and so the industries the technology areas have discrete classes you can begin to search by different classes along with the keywords that you’ve identified when you’ve refined and formatted your invention in a specific way so once that search is done on your own okay then you’ve you want to hire a professional to help you with the search if you do the search on your own it’s a great start okay before you even start it start talking with a patent attorney you’re going to want to have some level understanding of whether your invention is new or not so without having done that you’re just shooting in the dark now once you hit this level we just talked about where you hire a professional they do a worldwide patent search including all the right databases and classifications the third step is getting an attorney’s opinion okay it’s unfortunately the case that many inventors just file their applications after doing that first step of just ah hasn’t been done before I’ve been Googling I’ve looked it up on Amazon I didn’t see it and they didn’t get the professional search done and then on top of that the report that they may have gotten back they just looked at it themselves and didn’t necessarily think about it in terms of the the law and how an examiner would look at it so what the attorney’s opinion does is it truly will tell you like an examiner would approved or rejected an attorney will go through those three areas I mentioned novelty non-obviousness and utility and discern whether you have got enough whether that differentiation is substantial to where you can actually say yeah you’ll get a patent on this invention the fourth step is understanding the scope okay it isn’t it most likely is not going to be the whole invention that you’ve come up with that you’ll be able to claim and have ownership on so the idea and concept of claims is not something the everyday first time inventor has been familiar with claim language is the actual written words that you own at the end once you get the patent granted and so when you start thinking about a patent search result you’re going to be thinking you should be thinking about what those claims will look like how much could I write how much can I own about this invention using English words or if it’s a design patent using specific three-dimensional drawings that’s what you want to focus in on so understanding the scope so first we’ve got having done research hiring a professional getting an opinion done by that patent professional patent attorney and then fourthly understanding the scope of your potential rights that’s what will set you free if you find out that you know what the the patent that we could get for you would be so narrow it’s not going to be able to make a much of a dent in the market you should not do it because it’s going to cost you what could be 20 30 40 Grand by the time you get a patent issued and you won’t be able to recoup your cost they won’t the investment won’t be worth it and so that scope that last step was really crucial so don’t skip any of those steps and if you have any questions about patent research how to get started maybe the invention disclosure process or things that we have went over here today get a hold of us at bold and click contact and schedule a free Discovery session today if you enjoyed this video I invite you to please click below subscribe like we’ll be here posting every Tuesday again I’m JD hoovener owner founder and patent attorney at bold patent law firm have a great day everybody go big go bowl

About the Author
J.D. Houvener is a Registered USPTO Patent Attorney who has a strong interest in helping entrepreneurs and businesses thrive. J.D. leverages his technical background in engineering and experience in the aerospace industry to provide businesses with a unique perspective on their patent needs. He works with clients who are serious about investing in their intellectual assets and provides counsel on how to capitalize their patents in the market. If you have any questions regarding this article or patents in general, consider contacting J.D. at