Search of Patentability

One of the first steps in obtaining strong patent protection on a concept is to conduct a patentability search on the invention. This preliminary patentability search is typically recommended as a first course of action for two key reasons. First, the results of the search give the inventor an idea of what his or her changes are on patenting the invention, and thus help in determining whether the cost of a full patent application is economically justified. Second, and crucially, these preliminary search results provide key insight to the search that will be conducted by the U.S. Patent Office in the patent application process, and thus aid in the development of the patent application.

The preliminary patentability search is conducted in the related classes and subclasses of the more than nine million United States patents, as well as the millions of foreign patents on file in the U.S. Patent Office in Washington, D.C. To ensure the search is appropriately conducted through this vast array of technological material, it is preferable for the inventor to fully and accurately disclose the inventive concept to a patent attorney in our office. The best form of disclosure, in the case of mechanical inventions, is a rough sketch of the system, accompanied by a written description of the invention. In the case of electrical inventions, the initial disclosure may instead comprise detailed sketches and circuit diagrams, while a chemical invention would focus on a detailed written description of the methods of making and using the invention, as well as a listing of the chemical structures involved in the process, and the appropriate ratios and concentrations of same. It is important to note, though, that our firm would be happy to discuss the invention at length with the inventor during the initial consultation process, even in the absence of the above drawings or description.

The cost of the patentability search varies with the complexity of the invention. However, the usual cost range for conducting the preliminary search is $1,800-$2,500, with the understanding that the search is geared to be cost-effective. While the search is extremely valuable, it is structured to be limited to the particular classes and subclasses defined by the inventor’s concept, thus saving the inventor significant costs in the search process. As is our firm’s policy, we would request that payment in the lower amount of the confirmed estimate be provided prior to conducting the search. After our firm is engaged for the project, the full results of the patentability search report, including the full text of the cited references and our analysis of same, is typically provided to the inventor within five to ten days.

After receiving and reviewing the results of the search, the inventor and the patent attorney can meet to discuss potentially filing an application on the concept, in light of the search results. Our firm will not charge any additional fees to the inventor, nor will we undertake any additional projects, unless specific instructions are received from the client authorizing our firm to move forward.