The Value of a Patent Search

In order for an invention to be patented, it must be sufficiently new or different from what has already been issued or published. In patent jargon, this is called "novelty".  A thorough patent search will help an inventor assess the novelty of his or her idea. These searches are referred to as 'prior art searches.' Prior art searches may be conducted by the inventor, a patent searching company, a patent agent or a patent attorney. The PDTL will assist inventors in beginning a prior art search. The Maine Patent Program also offers searching services.

Here are some reasons why inventors should do a preliminary patent search before taking steps towards applying for a patent or hiring an attorney:

Reason 1: If the search results indicate that an idea has already been patented, then you will save the time, effort, and money involved in submitting a patent application and starting the licensing or marketing process. A product may have been patented but never have made it to the marketplace. Only 2 percent of all patents are ever commercialized. This is why inventors familiar with products or technology in a particular area may be surprised by the results of a patent search. Also the patent application fees are nonrefundable! If your application is rejected you lose the fees paid.

Reason 2: The results from the patent search may provide new inspiration and ideas for the inventor. Perhaps there is something already patented that you can improve upon. There must be novel, non-obvious improvements or changes to existing products or patents to meet the standard for a new patent. You can also refine your invention and patent application so that it does not interfere or overlap with existing patents.

Reason 3: By doing a patent search, you become more informed about the strengths of your invention and the current "state of the art", resulting in a stronger patent application or a more reasonable decision on whether to proceed with the patent process. You also become aware of corporations that own patents in your area of technology. The patent search can be expanded by searching on relevant companies and looking at their full list of patents. You may decide to contact some of these corporations about licensing and manufacturing your invention. You may also discover that similar inventions were not commercially viable or profitable. This may help you make a decision about whether it will be practical to continue with the patent process.

Reason 4: The search will identify patents and articles that are related to your invention. It is important to read over these to become informed about the elements required for a patent. These articles and prior patents may also comprise the list of prior art that is included with most patents.  Also if certain components of your invention have been described in detail in prior patents or articles these may be used in your application in place of detailed drawings and description that you would have to provide. This will save time and money in the preparation of your application. The knowledge from all of your searching and reading will make your patent application stronger and less vulnerable to rejection by the USPTO and challenges by other patent owners or companies.

Reason 5: If you use the services of a patent attorney, the knowledge gained from the search will help you become a more informed client. Many patent attorneys advise potential clients to perform their own preliminary patent searches, often as an attempt to "weed out" all but the most serious inquiries.   

The staff of Fogler Library provides training and assistance in doing a patent search. Call the Fogler Library's Patent and Trademark Depository at 207-581-1678 to make an appointment for a patent search, or to obtain basic information on patents and trademarks.

Disclaimer: PTDLs are neither required nor encouraged to conduct patent and trademark searches for their patrons as that activity may be interpreted as rendering a judgment or opinion. PTDLs are required to instruct patrons in the use of the search tools available at the PTDLs for patrons conducting their own patent and trademark searches.

Return to the Fogler Library Patent and Trademark Depository Library homepage.

For more information, contact: 
Martin Wallace
Science and Engineering Center
Patent and Trademark Depository
Raymond H. Fogler Library
Orono, Maine 04469-5729 
Phone: 207-581-1678

Last Updated by:  Martin Wallace: 04/28/2009 .