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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? I’m J.D. Houvener, 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.

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 – 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. 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 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 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: 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? Because the specifics – the structure, the materials, the how your invention works – it wasn’t really laid out. 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” – or just an invention disclosure – which is a written description of what it is you’ve invented along with flowcharts, drawings, even sketches, will 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.

That’s step one. Step two is to have a research that is thorough – not just looking at what’s been published out there on Google Patents, 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 PatFT 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.” 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.

Once that search is done on your own – then 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 – before you even 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.

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. Unfortunately, it’s the case that many inventors just file their applications after doing that first step of, “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 law – and how an examiner would look at it.

What the attorney’s opinion does is it truly will tell you – like an examiner would approve or reject – 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. 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 – that’s what will set you free. If you find out that you know what, the patent that we could get for you would be so narrow, it’s not going to be able to make much of a dent in the market, you should not do it because it’s going to cost you what could be $20,000, $30,000, $40,000 by the time you get a patent issued and you won’t be able to recoup your costs. 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 boldip.com 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 J.D. Houvener, owner, founder and patent attorney at Bold Patent Law Firm. Have a great day everybody. Go big, go bold!

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 https://boldip.com/contact/