HOW TO APPLY FOR PATENTS Part III

CAN I CONDUCT MY OWN PATENT SEARCH?

The only way that you can conduct a proper patent search yourself is to personally visit the Patent Office. This, in most cases, is not practical and would be very expensive. Further, unless you have substantial experience in doing patent searches, you are very unlikely to conduct a thorough and accurate search and you may very likely not find patents which are relevant to your idea.

If you are unsuccessful in conducting a thorough and accurate search, there is no point in conducting the search at all, as an inaccurate or poorly done search is of very little value to you. The purpose of conducting the search is to warn you of any difficulties which you may have in pursuing patent protection for your idea; thus, it is important that the search be as complete as possible.

An incomplete search can give you a false sense of optimism at your prospects of obtaining a patent. In this regard, you would prepare and file a patent application only to discover later that the application was objected to on the basis that your initial search missed a patent.

In addition, if your patent application does not point out the substantial differences and benefits of your invention over any other patented inventions, the Patent Office will not likely approve your application. By having the patentability search done first, you can determine not only how successful you may be in pursuing a patent application, but also enable you to improve the quality of your patent application and thereby improve your chances of obtaining a patent.

When a patent application is examined, and the patent examiner believes that you have not done sufficient work to prepare the application (that you have not conducted an initial patentability search or have done a very poor search), the examiner will reject your application or at the very least oppose a number of the portions of your application.

This will make it much more difficult for you to obtain a patent, since the examiner has already determined that he or she is not going to allow your application and you must then attempt to persuade the examiner that he or she is mistaken and that the objections raised by the examiner were improper or for some reason should not have been raised.

On the other hand, if you have done a complete and thorough search, you will be able to improve the quality of your patent application, thereby increasing the probability of your application being granted.

WHERE SHOULD I DO A SEARCH OR HAVE ONE DONE FOR ME?

We would recommend that the initial patent search be conducted in the US Patent Office as it has far more patents on record than the Canadian Office; thus, a search conducted there will be more accurate and thorough than a search conducted elsewhere.

In the next issue we’ll get into the details of international, specifically US office patents.