And the Key Signs that Indicate When You Do

I love to give advice, especially when I know my prediction will never be wrong.  My favorite advice is to predict a 50-50 chance of success.  Because no matter the outcome, I’m never wrong.

My other favorite is recommending a patentability search.  Because no matter the results, my client is happy.  If we get “good” news, and nothing is found that blocks patentability, my client is happy.  If we get “bad” news, my client is grateful they have the disappointing information before making a bad investment decision.

So why do I hardly ever recommend a patent search?  There are a bunch of important reasons you need to understand before deciding whether to bother investing in a patentability search.

  1. The search we’re talking about probably costs a couple thousand dollars, and that adds significantly to the cost of the patent. Maybe 10%. So if you invest in 10 patents and a search saves you from a wasted investment in one of those, you break even.  But given my experience with patent searches for my clients, a search isn’t helpful even half that often.
  2. Even moderately disappointing search results usually don’t cause the project to be dropped, they just narrow and focus our expectations. The search cost is added without any real benefit.
  3. My clients can often do their own effective search. I advise first doing an internet search for your invention, as if you’re trying to buy the product. “Aftermarket heated steering wheel cover.”  Or, “Magnetic magazine release” (I made that up, and have no idea how that could be useful).  Don’t forget that the best patent search is usually the expertise of someone who is inventing in that area – your own knowledge – which is usually even better than the personal knowledge of a patent attorney who has spent decades in the field.  In my own inventions, my best odds of success are in gun and optics related inventions, and far less successful when I think I have a good idea about software, smart phones, and other things I might know as a customer, but am outside the industry.  I have no idea whether those in the industry have had those ideas already.  If you’re a trigger designer, you probably know about most of the past trigger designs in the prior art.
  4. You can sometimes even do a sophisticated patent search like the professionals do. I revealed how in a past issue of this newsletter. Google Patents is my number one patent search tool, and it can be yours too, especially when you learn how easily to search by inventor name and company owner (i.e. “assignee”).  This is more useful when your invention is easily put into words like “magnetic pistol magazine” and more difficult when the invention is a “rifle hammer with a recessed area to provide clearance for the bolt for improved operation” because even if that was described in some patent or publication, those words probably won’t be in the title or description.  (Important note – a patentability search doesn’t care whether the publication is a patent – expired or not – or any other publication like a book or an AR15.com forum comment.  All that matters is what technology or “prior art” was known at the time your patent application is filed).
  5. A full patentability search can take time you don’t have. It might add a month to the timeline before filing a patent application, and your deadline may be more pressing – There’s sometimes no time to search.
  6. Even a good patentability search can miss the key document you’re looking for. Assume a 50-50 chance of success in that as well. If you spend tens of thousands of dollars, your odds go up – a little.  If you’re accused in a multi-million-dollar lawsuit you’ll spend much, much more to try to find the smoking gun that threatens the patent you’re accused of infringing.  But when weighing whether to invest in a patent application, an expensive search doesn’t make economic sense.
  7. Why bother? A patentability search costs more than the inexpensive provisional application you were going file anyway, and which will probably provide much more benefit. A provisional application serves to secure early rights on whatever might be patentable in the details it discloses.  We don’t even have to know what the patentable concept is.  It’s like paying for an option for mineral rights – you pay a little, and if your exploration determines it’s worth drilling, you can acquire the rights.  When the bigger investment decision comes about the full non-provisional, you might already know enough to proceed with confidence, or to drop the project if the prospects tour out to be disappointing.  And don’t forget that your provisional application cost is a credit toward your next non-provisional (full) patent application.
  8. You’re already paying for one. When you pay a filing fee for a full patent application, you’re paying for the patent examiner to examine the application, which means conducting a patent search. The examiners are specialists not just at conducting patent searches every work day of their lives, but they are grouped by technology so a firearms invention will be examined by an examiner who knows the technology and prior art better than just about anyone on the planet.  They know the technology.  Examiners are motivated to find the closest prior art, so you’re likely to get a good search.  That search won’t spare you the cost of the patent application, but it will help determine the scope and strength of your rights.  It’s extremely rare to have a patent examiner to find prior art so close that it triggers true filing regrets.
  9. Another caution about patent searching is that most searches just look at the database of issued patents and published patent applications. This is a great database, except that not every pertinent “prior art” technology has been patented. The reality is that we search there because it’s easy to find things there. Kind of like the drunk who lost his car keys down the street, but searches under the lamppost a block away because “the light’s better here.” Maybe it’s not that bad, but it’s why I suggest supplementing a patent search with an Internet search, and advise my clients to research their own industry references for other possible prior art.

First, there are other types of “patent searches” that serve different purposes than an “is this patentable” search.

An “infringement” search might be called a “right to use” or “freedom to operate” search.  It answers the question of whether your proposed new product will get you sued for infringing someone else’s patent rights.

Sometimes, a client will call me to talk about patenting a new product. Then, he gets worried that the new product might infringe someone else’s patent. He’ll often ask me if we should search to make sure the new product doesn’t infringe someone else’s patent. The answer is almost always, “Don’t bother.”  I like to advise that an infringement search is only for when there’s a reason to worry about infringement, beyond the normal worries.  A reason is something like “there’s a company that we’re competing directly with and they say “patent-pending” on their webpage for the product we’re going after.”  That enables a targeted search for patents that might be pertinent.  But the usual worries about possible patent infringement without any other reason don’t justify paying for a right-to-use search.  Those searches are performed by mega-corps before investing a billion in a new product line, and cost hundreds of thousands of dollars.  Your new product is better off self-insured, and the unlikely worst case is you’ll have to drop the product and lose your investment and effort.

But…sometimes a search makes sense.

A patent search can save my clients big bucks. Like the dear old client of mine decades ago who really thought he’d invented the heated steering wheel. Of course, patent attorneys don’t necessarily have any special knowledge about what’s been invented and what hasn’t. We have to research to find out.

But my gut said that heated steering wheels had already been invented even though I’d never seen one at the time back around 1990. So I did a quick search on the Patent and Trademark Office database. Today, you could Google “heated steering wheel” and get close to a million hits.

Of course, I found dozens of patents on the subject, most owned by various big automakers. They covered features like ways to manufacture a heater from a durable film, and rotary connectors that provide the electrical connection from the rotating steering wheel back to the dash board. That search cost the client a couple hundred dollars, and saved him maybe ten thousand dollars.

A patent search is like an insurance policy. It reduces the risk that you might waste big bucks on a patent application, only to find out that it was unpatentable. It can’t eliminate all the risk, because no search is perfect. For a search to catch 99% (even 90%) of all relevant “prior art” (which is what we call any technology that pre-dates your invention), it would cost far more than a patent application and take longer to prepare.

Patent searches add to the overall cost of the process. But they do provide advantages other than preventing investing in an unpatentable invention. For instance, the search results help to educate both the inventor and the patent attorney. My client can learn about some related technology that he might not have known about, which may mean getting information about his competitors’ products, or even ideas of how to improve his own. Of course, he needs to be careful about adopting ideas from unexpired patents, so he doesn’t infringe the rights of others.

A patent search that yields close but not killer “prior art” helps me as the Patent Attorney to focus the strategy of the patent application. My client might wishfully assume that his broad concept of a heated steering wheel is patentable. A search may tell us that the concept is already well known, but let us focus on a particular aspect of his invention that still may be patentable. I can write a patent application that focuses its attention on that feature, and we may even save a round of rejections (and thus thousands of dollars).

The Final Word

It depends.  Mostly it depends on your exact circumstances.  I’ll have a gut feel I’ll share with you (sometimes I’ll share that my gut has no clue).  If there’s time, we can always talk about whether a patentability search is likely to be a good investment for you.  I’ll probably suggest you’d be better off with a provisional application and crossed fingers, but you never know.  Give me a call and let’s discuss…

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About the Author: Ben Langlotz

Ben Langlotz is the nation’s leading firearms patent and trademark attorney, and the author of Bulletproof Firearms Business: The Legal Guide to Success Under Fire. He is trusted by more firearms industry companies than any other lawyer or law firm in the nation, and is consistently ranked at the top of all attorneys in securing gun patents and gun trademarks.