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U.S. PATENT SEARCHES

There are several ways to proceed, depending upon whether you are interested in doing the work yourself or if you would prefer to hire a professional.

Inventors and entrepreneurs who are looking to cut costs and do some of the preliminary searching on their own will want to take a look at the U.S. Patent Office patent search page. A lot of information can be found free, and the system is not terribly difficult to use. There is also an excellent Help Section on the USPTO site to educate users on how to use the online search features.

When using the USPTO search features, one trick to improve search quality is to start by using the Advanced Search page and searching in the specification field. Lets say, for example, you are looking for patents that relate to insulated containers for carrying beverages. In order to do this you will first need to pick a term or phrase that might appear within the written description of issued patents. Following this example, you might try in the search box - SPEC/"insulating thermos." When this search was conducted the results returned a list of 15 patents issued since 1976 that have used that phrase. This points to the first problem encountered by doing your own patent search online at the USPTO. You can only do full text searching back to 1976. This is probably not too much of a concern for those operating in the high-tech sector, but important to known nonetheless.

In this case there are not many to choose from. Many times, however, the list will contain hundreds of patents depending upon the popularity of the term or phrase selected. If you find too many patents, rework the specification field search. Ultimately, upon receiving managable results, just click on several of the patents. At this point you should try and identify the U.S. classification that relates to the type of invention you are searching. Upon identifying several U.S. classifications, visit the Advance Search page and do a classification search. For example, again following our example, you may notice that classification 206/545 seems relevant. As it turns out, this classification relates to special receptacles or packages with an insulating feature. See U.S. Classes by Number & Title. Therefore, it would seem that patents within this classification are potentially highly relevant. As it turns out, there are only 131 patents issued since 1976 that were categorized in this classification.

Admittedly, becoming familiar with the intricacies of doing a quality U.S. patent search on your own may take time. Also, when searching using the USPTO system there are a number of fields that are searchable through the Advanced Search page, which means that there are any number of ways to begin to tackle any search. If you are a serial inventor it is probably worthwhile spending time becoming acquainted with this and other ways to search.  See for example,  FreePatentsOnline.com


For those not wishing to do their own search, or those wish to have a more thorough, professional search, another option is to contact a patent attorney. Many, if not most, patent attorneys will not actually do the search themselves but will hire a firm that specializes in patent searches. These firms usually charge upwards of $500 for a very basic U.S. patent search. If you also require an international patent search the fee will likely be upwards of $800. So, in other words, if you want to have a basic, world wide search you are likely to be looking at upwards of $1300 just for the search. Of course, if you want to hire a search firm directly this can be done with or without going through a patent attorney. The search firm, however, will only provide a list of patents and the patent documents themselves. The search firm will not issue any kind of patentability opinion.

At this point it is worthwhile to take a step back and emphasize that the searches described so far, whether done individually, through a search firm or through a patent attorney, are very basic searches. Nothing fancy, but probably enough to start and enough to let you make an initial determination of whether it makes sense to move forward.

As you move through the patent search phase, once you have either done the search on your own or obtained a search from a patent search firm, there will come a point in time where it makes sense to hire a patent attorney to review the search results.

After the search is completed the patent attorney will need to review the search and the issue some form of opinion (either in writing or verbally). If you go with the basic U.S. patent search, the patent attorney can probably review the prior art and issue a preliminary opinion on whether the invention is likely patentable in about 2 to 4 hours. This general estimate on necessary time can, however, vary greatly depending upon whether the field of invention is crowded, and the technological complexity of the invention and the prior art. You should expect to pay at least $1000 for a preliminary patentability opinion. If you need an international patent search you should expect to pay at least another $1000 to review and consider the additional materials that will be found. Having said this, sometimes patent attorneys will charge less for the patentability opinion if you also have them prepare and file a patent application.

Given that the patent search is not usually conducted by the attorney but rather is contracted out, most patent attorneys will require a retainer deposit of at least $1500 before ordering a patent search and commencing work on the patentability review.

It is important to note that if the conclusion is that a patent is not likely to be awarded you do not get your money back. This is the price of the search and a legal opinion with respect to whether it is worth moving forward. An honest opinion is what you want. Even if you spend the money only to learn that no patent is likely to be obtained, you have saved yourself the time and expense associated with drafting and filing the patent application, which can result in a substantial savings.