Every patent begins with a search. The USPTO will only, pursuant to the U.S. Constitution, grant a patent for an invention that is new.
On average, a new patent application is filed every minute. One is granted every three minutes. Any one of these applications or registrations may have similarities to your idea. You must search, find, analyze, and explain why your invention is new and different.
A search of U.S. patents (granted and pending) is based on international classifications of technical terms in partnership between the USPTO and European Patent Office (EPO).
Click here to view examples of how a patent search is conducted.
The federal government has the resources to find a vast amount of information that not even an experienced professional can locate. Examiners are assigned to categories of applications based on technical speciality. They have onsite access to over 17,000 scientific, technical, business, and general periodical titles. Examiners also search all granted and pending applications. If somebody else beat you to the Patent Office or published details about a similar idea, chances are that a federal examiner will locate such a document. It doesn't matter whether a product was ever brought to market, or if the general public even knew about the invention.
Once your patent is granted or the pending application is made public, your competition or any third-party has the legal right to challenge your application by conducting their own search to find what the federal examiners missed.
One well-known lawsuit shows why a perfect search is not possible (In re Hall, 781 F.2d 897, Fed. Cir. 1986). A U.S. patent application was rejected based on a student in Germany who submitted a thesis to a university library. It was cataloged and put into a “stack” of papers. It was only necessary that the thesis was publicly accessible, even if in an extremely limited sense. It didn't matter whether anybody ever read the thesis, only that it was available for somebody who could have accessed the document.
Novelty and Obviousness:
There are two statutory tests for patentability: Novelty and Obviousness.
Novelty is another term for new. The following questions are useful.
- Did an earlier inventor anticipate your invention?
- Does the public know about your idea?
- Is the invention used by the public?
- Has it been more than one year since the public first started using the invention?
- Was the invention available for sale?
- Did the inventor abandon the possibility of obtaining a patent?
- Did the inventor obtain a foreign patent?
- Who is the true inventor?
- When was the invention first conceived?
Obviousness is another way of asking whether an idea is a "No Brainer", in which case the federal government will not issue a patent.
- Did the applicant merely modify something that already existed?
- Could the idea be conceived by combining two more references?
- Does a reference teach how to make an invention?
- Are there apparent differences?
- Did the reference propose how to make certain modifications?
- What is the scope of the reference?
- Are the claims different or the same?
- Who is a person of ordinary skill in the field related to the invention?
- How did the references solve a problem?
- How fast are innovations developed in the field?
- Is the associated technology sophisticated or basic?
- Who is a typical worker in the field?
- What is the commercial success of these existing ideas?
- Do individuals need the new invention?
- Did the inventor obtain an unexpected result?
- Is there skepticism related to the new idea?
- Has any industry adopted these concepts?
- Who created the references?
- Were the references developed pursuant to an employment or research agreement?
- Did the inventor or a co-researcher create the references?
Title 35 of the U.S. Code
Section 101: Inventions patentable
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Section 102: Conditions for patentability; novelty
(a) Novelty; Prior Art. - A person shall be entitled to a patent unless - (1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or (2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Section 103: Conditions for patentability; non-obvious subject matter
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.