Steps to Conducting a Patent Search
Some inventors choose to undertake the task or researching existing patents and published applications themselves, often with the aid of patent software programs. The PTO has designated several Patent and Trademark Depository Libraries (PTDLs) around the country to receive and house copies of U.S. patents and patent and trademark materials, to make them freely available to the public, and to provide the public with information about patent and trademark information. The PTLD staff are available to help you with training on U.S. patent searches and research, which include the Cassis DVD-ROM system, the PubWEST database, and the USPTO website.
The PTO recommends the following steps to successfully researching patents:
- Keywords. Think of applicable keywords that describe the purpose, use, and/or composition of your invention.
- Find classes/subclasses. Use these keywords to find potential classes and subclasses in the PTO's Index to the U.S. Patent Classification.
- Verify classes/subclasses. Double and triple check the relevancy of the class/subclasses by using the classification schedule in the PTO's Manual of Classification and then read the classification definitions.
- Access full-text. Search the Issued Patents and the Published Applications databases on the PTO website by 'Current US Classification.' Read the full-text of issued patents and published applications.
- Review claims. Look at the claims, drawings of inventions and read the specifications of other patents and applications.
- Check references. Cross-check references and look at "field of search" areas for other classes and subclasses to search.
Be aware that the majority of applicants choose to secure the services of a patent attorney or a professional patent search firm. Patent attorneys typically hire professional researchers to do the actual patent search; the turnaround time with lawyers who specialize in handling such searches is usually fast, but they are also expensive because of the mark-up charge that attorneys impose.
Dig Deeper: How to File a Trademark
How to File for a Patent: The Types of Patent Applications
Bringing the patent process into the 21st Century, the PTO has established an Electronic Filing System letting you file applications over the Web. You can also still file paper forms and mail them to the Commissioner of Patents. But how you choose to file your patent application is only one of many decisions you need to make during the process.
Here are some other decisions you need to make:
Provisional vs. Non-provisional
There are two types of patent applications that inventors may file. A non-provisional application automatically begins the patent review process and may lead to the awarding of a patent. But starting in 1995, inventors were also allowed to apply for a provisional application, which establishes an official filing date for the invention and allows you to use the term "Patent Pending" in connection with your invention, but it doesn't launch the examination process. The provisional application gives you 12 months to file a corresponding non-provisional application, but the benefits include that the patentability would be judged as if the application were filed on the earlier date and the 20-year patent term would be measured from the later non-provisional application filing date, the PTO says.
Utility vs. Design vs. Plant
There are three types of patents -- utility, design, and plant.
- Utility Patents. These are the most common kind of patents. They are granted to inventors who, according to the PTO, invent or discover any new and useful process, machine, manufacture, or compositions of matter (mixtures of ingredients, chemical compounds), or any new and useful variations of existing products, processes, or compositions.
- Design Patents. Inventors can also obtain patents on the appearance of a product, provided that it is a new and original design.
- Plant Patents. This kind of patent is granted to anyone who invents or discovers and asexually reproduces any distinct and new variety of plant, including cultivated sports, mutants, hybrids, and newly found seedlings.
Utility Patent Application Transmittal Form (Form PTO/SB/05) or a transmittal letter should be filed with every patent application to instruct the USPTO as to what actual types of papers are being filed (e.g., specification, claims, drawings, declaration, information disclosure statement). It identifies the name of the applicant, the type of application, the title of the invention, the contents of the application, and any accompanying enclosures. (Form PTO/SB/21 is to be used for all correspondence after initial filing.)
Patent Drawings: Professional vs. D-I-Y
Sometimes patent applicants are required to submit drawings of their invention – particularly when the nature of an application requires a drawing to understand the invention. Patent experts advise inventors to secure the services of an experienced patent draftsman when the time comes to make patent drawings. "The requirements for drawings are strictly enforced," warns Levy. "Professional draftsmen will stand behind their work and guarantee revisions if requested by the PTO due to inconsistencies in the drawings…. Because the design patent is granted for the appearance of the article, the drawing in the design patent is more critical than the drawing in a utility patent. The design drawing is the disclosure of the claimed design, whereas the utility drawing is intended to provide only an exemplary illustration of some aspects of the mechanism described in the specification and claims."
