Why do a search?
Written by Tim Mount on 06 June 2010« Return to Reading Room
Well, for one thing, patent protection is an expensive business, involving a few thousand for the UK. Which is in fact very reasonable considering a granted patent will give you a monopoly in the UK for up to (depending on payment of renewal fees) 20 years. If you happen to hit upon a renewable energy source and you successfully obtain a UK patent, you will be a rich man and might end up spending a few thousand on lunch.
To extend patents internationally is where the money lies. In more than one sense. Obtaining patent protection across the globe in even only the major markets will cost 50k upwards.
All reasons for getting a search done before filing revolve around the money. Show me the money, someone once said. But that might be all they do if your patent does not even get through the first UK IPO (intellectual property office) hoop. So you throw away a few thousand and the Examiner takes one look at your application and gives you a list as long as your arm of prior filings that anticipate your application. And you come back to earth with a bump, and spend a sum of money trying to argue with the Examiner that YOUR invention is completely different.
Or your patent application gets a slack examination (they can happen) and sails through the UK IPO. You start thinking, "man ... I'm gonna be rich" - you buy yourself a PCT (patent cooperation treaty - commonly known as an 'international application') at a cost of a few more thousand. Then the nominated examination office undertakes an examination of your PCT and an Examiner comes along and cites a pervious filing that absolutely and entirely anticipates your application. But the UK IPO Examiner had popped out for a toilet break during that bit of the search. And now it's too late to add anything to your application as the 'convention year' (1st anniversary) has passed. SO you come back to earth with a BIG bump.
Essentially a search through Lawdit will provide you with your own framework to assess how good your application is going to be, before you spend those thousands.
We review prior filings, then review the prior filings cited in those prior filings, then maybe review the prior filings based on t...you get the picture.
We review prior filings based on key words, looking at the abstracts, the claims, the figures.. We look hard, and are not happy till we can at least in some way put a question mark next to what we are supposed to be drafting. Only this way can we be sure to draft a specification that sits in the middle of the available field, that allows room for manouevre within that field. If (as can clearly happen) an Examiner finds or highlights different previous filings we are then able to turn the application in another direction in the knowledge that the way we are headed has fewer cow pats.
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