By: Mark R. Malek
My previous articles (see them here, here and here) have provided information on the requirements of disclosing prior art and about how to do some prior art searching. Many times, I am asked by a client to provide them a “complete” patent search that locates every piece of related prior art in the field. I completely understand why they request this. The patent application process is an expensive and time consuming one. They want to be sure that there is nothing out there that is going to stop them from getting a patent.
Unfortunately, there is no such thing as a “complete” patent search. There are pretty comprehensive ones, but no patent attorney out there can promise you a “complete” search. The reason is because after patent applications are filed, they are pending in secrecy at the United States Patent Office for 18 months. There are, of course, exceptions to this rule. For example, some inventors request early publication of their patent applications. These instances are rare, but do occur. Therefore, even the most thorough of patent searches will still not uncover the information in a patent application that is pending and has not been published.
The point of this short article is that there is no “complete” search. Don’t be roped in by attorneys that say there are. Next article will give some information on what you should expect from a good patent search. I’m also going to post an article soon about my favorite line from inventors – “there’s nothing like this out there.” Let’s just say that I’ll be discussing the over 8,000,000 patents that are issued out there. Before you ask, the answer is “no” – not all of them actually make it to market.