The Franklin Forge

The Franklin Forge: Patent Search

The Patent Search…is it necessary?

The new patent Law encourages inventors to file a patent application as soon as possible. Prior documentation (e.g., a notarized statement) helping to establish a date of conception will no longer relevant under the new U.S. Law. Under that new Law, inventors are now on a “first to file” system as opposed to the previous “first to invent” system. That is, the “date of conception” of an invention automatically is determined by the date the application is filed in the Patent Office.

Conducting a preliminary patent search takes about 2-3 weeks and will delay the filing of your application accordingly. People ask, “If it’s so important to get the patent application filed as quickly as possible, why then is it necessary to conduct a patent search?” Conducting a patent search is important if you’re going to file a Non-Provisional/Utility Patent Application because one requirement of such an application is a description of the prior art (previously issued patents) relating to your invention.

However, if you’re going to initially file a Provisional Patent Application (PPA), a patent search is merely an option. A properly prepared PPA has a written description of your invention and, where applicable, appropriate patent drawings illustrating a preferred embodiment of your invention. A PPA does not require discussions about the prior art, claims or an abstract. Filing a PPA establishes a filing date under the new Law, and places you in the “patent pending” stage.

We Encourage You To Do A Patent Search

The advantage of having a patent search performed before you file a PPA is that you can determine if another has already patented your invention or whether an unexpired patent exists claiming your invention. Do you want to know if your idea conflicts with an unexpired patent? Would you like to know what aspects of your idea are potentially patentable? If you’re answer is “yes” to either question … then a patent search is a valuable option.

Personally, I recommend having a patent search performed. The main reason: to find out if your invention has conflicts with a patent that is currently enforceable. This will help to avoid legal entanglements down the road.

If you elect to have a patent search conducted, we offer two types: a Screening Search or a Novelty Search. A registered U.S. Patent Attorney with many years experience searching the Patent Office database performs the searches.

Both patent search investigations are conducted by the Patent Searcher using the Examiner’s Automated Search Tool at the U.S. Patent and Trademark Office (USPTO). This is essentially the same system used by government Patent Examiners when searching pending patent applications.

The Screening Search reviews the unexpired prior art patents identified by the searcher. The searcher provides written comments relating to possible conflicts with the claim(s) of any of the unexpired prior art patents.

The Novelty Search carries the Screening Search one step further. The patent searcher also reviews expired patents, and the written report comments on the "novelty" of your invention which is important in evaluating the potential patentability of your invention.

Click here to download the Invention Record Form to obtain our free assessment.


Helping PEOPLE Turn Ideas into Products.