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At LoTempio Law
Offices, our patent searches include:
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A preliminary search of patent disclosures available at the PTO.
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A search report with recommendations by a registered patent
attorney.
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Use of Internet and PTO resources to conduct the search.
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Consultation with Patent Examiners, as needed, about the field of
research.
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Copies of patents deemed relevant to your invention.
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Completion typically within 5-15 business days.
The objective of any preliminary
patentability search is to discover issued “prior art” United States
patents which are similar to the invention being investigated so that a
judgment can be made as to the potential for obtaining patent
protection. Basically,
there are two (2) main types of patents (i.e., utility patents and
design patents). When
possible, a patentability search is directed to both utility and design
features of an invention so that a determination can be made as to which
type of patent protection may be available.
In attempting to reach a
decision regarding the patentability of a new invention, it is initially
necessary to compare the invention to other inventions that have already
been patented, “prior art” patents.
The typical procedure is to look for differences in (1) structure
(or composition if a chemical invention), (2) function, and (3) overall
appearance. Structural and
functional differences are of important considerations in determining
whether or not to pursue utility patent protection.
A comparison of the overall appearance with respect to the prior
patents is important if design patent protection is being considered.
If no single prior art patent discloses
enough information to eliminate the possibility of obtaining either
utility or design patent protection, it is still necessary to consider
those situations in which the U.S. Patent and Trademark Office may
attempt to “combine” the information shown in two or more patents to
“build” the invention at issue.
More specifically, where no single prior art patent discovered
during a patentability search discloses the functional subject matter or
appearance of an invention, a government patent examiner will frequently
argue that someone with ordinary skill in the art is already in
possession of the cumulative information and knowledge shown in two or
more patents, and that person will then know how to combine the
knowledge of these several prior art patents so as to make the searched
invention “obvious” and therefore unpatentable.
In resolving the obviousness issue, the law requires
that the invention was non-obvious to an individual with ordinary skill
in the art at the time the invention was made.
Thus, the law charges a hypothetical "skilled mechanic"
with the knowledge of all of the pertinent prior art. The question,
then, is whether the prior art references, considered individually or
collectively, contain sufficient teaching, suggestion or motivation,
such that the inventive subject matter would have been obvious to such
person at the time the invention was made. |
