Chapter 37 - § 37.6 • OVERVIEW OF U.S. PATENT PROCEDURE

• Jurisdiction: Colorado

§ 37.6 • OVERVIEW OF U.S. PATENT PROCEDURE

A general knowledge of patent procedure might be helpful to a business attorney discussing patent protection with a client. This is especially true for clients who have already been through the patent process and have some working knowledge of the patent system.

§ 37.6.1—Patentability Searches

Before incurring the cost of preparing a patent application on an invention, it is a good idea to determine whether there is any prior art that will bar the patent claims from being patented. Typically, a patent search is performed by enlisting the services of a professional patent searcher to search for printed publications that might disclose the proposed invention. The patent searcher typically reviews online databases for any printed publication that is relevant to the client's proposed invention. The best references often take the form of previously issued patents or published patent applications. The typical time frame for receiving the results of a patent search is one to three weeks.

One can perform a very thorough search oneself using online search engines and the databases of the USPTO. There are two particularly helpful databases that one can use: (1) issued patents and (2) published applications. These databases are found at http://patft.uspto.gov, or may be accessed by starting at the USPTO's home page at www.uspto.gov. The Denver Public Library and the Denver Office of the United States Patent and Trademark Office also have search facilities that are available to the public.

Even if a client does not find any relevant prior art references from doing a search on the free databases of the USPTO, he or she would be well advised to have a professional searcher search the invention as well. Such searchers are usually former patent examiners and often locate the same references that the actual patent examiner will locate during the examination of the patent application. A good search can be a major cost savings for a client if the search identifies a damaging reference that persuades a client not to go forward in preparing a patent application. It can also be helpful to the patent attorney so that patent claims of proper scope are filed from the start.

It should be noted that patent searches are imperfect. Many patent applications that are unpublished — but that have an earlier priority date to the inventor's invention — will be unpublished at the time of the search. So, the searcher is not able to see all of the pertinent references.

Practice Pointer
Patentability searches can always be improved. They should be approached with a cost-benefit analysis. At some

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