THIRD IN A SERIES
By James F. Riordan
Before filing for a patent, you should conduct a patent search to be sure your idea isn't infringing on an existing patent and to be sure that the idea has not been patented years ago and is now common knowledge, which means the patent may be denied. If your idea appears to be a good one, which has the potential for a strong ongoing market, I strongly suggest you have a patent attorney or patent agent do a search for you. Searches usually run between $450 to $1,000 depending on the complexity of the device.
You may choose to do a patent search yourself. If so, you must visit either the patent trademark office in Arlington Virginia or one of the patent depository libraries located throughout the U.S. Once you get to a patent depository library, here are the steps you must take:
1. Determine how your product is "classified" for patent search purposes. You do this by looking up the direct name of your product in the alphabetized INDEX TO THE UNTIED STATES PATENT CLASSIFICATION which is available at most patent depository libraries or you can purchase a copy of the book (for around $20) from:
United State Department of Commerce Patent and Trademark Office Washington, D.C. 20231
If you can't find your product under its direct name, try looking under the way it works, the principal it's used for, or its method of use.
2. Once you have the name of the product category for search purposes, you now need to look up the numerical listing of your main class and subclass. You find these in the MANUAL OF CLASSIFICATION. Choose the subclass that best describes your invention.
3. Once you have the numerical subclass which you think fits your product, check the CLASSIFICATION DEFINITION BOOK to be sure that the description accurately matches your product.
4. Next, go to the microfilm. This is a compilation of all the patent numbers which have been granted a class and subclass from 1836 through present. Follow the instructions provided at the library for using the microfilm system. While searching for patent numbers which have been issued in your class and subclass, you may come across numbers which are followed by the letters "X" or "U." These letters indicate a patent which is not the exact same thing you're searching for, but may be related in some way. It's wise to write down those numbers also and check them out. When you're done with this step, you should have a list of patent numbers which you'll review to see if they're the same as your idea.
5. Review the classification of patents in the Official Gazette. Every two sheets of the gazette show every patent granted for an individual week. Find the main class in the bold print and then go down the column looking for your subclass and write down any patent numbers which fit the subclass you're searching.
6. Review the copies of the gazette which contain the patent numbers you've found and read the abstracts of the patent. Remember that the abstract doesn't detail all of the claims, so if you find that an abstract sounds at all like your idea, circle that patent number on your list and go on to step 7.
7. Review the complete copy of each patent number you've found that relates to your subclass. Read the abstract, then read the claims. Take copies of any patents which appear similar to yours for inclusion in your patent application. If you can't find a copy of a patent that may be important to your search, contact the patent office and they'll send you a copy for a modest fee.
While a search you do yourself is not always complete, it may turn up a patent similar to yours and save you the cost of having a patent attorney find it.
Don't despair immediately if your search turns up a similar patent. One of my clients had a search done which turned up exactly the same thing he had invented. He came to me feeling terrible. I looked at the patent, which had been issued only recently and within a few phone calls I located the patent holder. The inventor was an older gentleman who, for health reasons, was unable to pursue the sales effort. The inventor immediately licensed my client to become the sole distributor of the product for a fixed royalty of ten cents apiece and my client avoided the cost and delays of the whole patent process
Another option is to take the offensive and try to design around the other party's patent and get your own patent. Yet another option is to simply make and sell the product anyway and gamble that the patent holder won't catch you or won't have enough money to beat you if and when you do get caught.
Personally, when I find out another person has beaten me to an idea, I just drop it and go on to the next one, which I believe is the morally right thing to do. I mention these last two options only in the interest of letting you know that corporations don't come "complete with morals" and you may find one of them trying to do this very thing to you or your company at some time in your career.
NEXT ISSUE: More on Patents
The above article was taken from James F. Riordan's classic book, HOW TO EVALUATE THE POTENTIAL FOR SUCCESS OF A NEW PRODUCT OR TECHNOLOGY. Riordan's highly-acclaimed, 36-point system is a valuable tool for inventors, product evaluators or anyone interested in the invention process. Each section is followed by a comprehensive questionnaire that can be used to evaluate your product.
The highly-recommended book can be ordered by contacting the James F. Riordan Company, 3110 Camerosa Circle, Cameron Park, CA 95682. The company can be reached by phone at (916) 676-4729. The book may also be ordered through Dream Merchant, 2309 Torrance Blvd., Suite 104, Torrance, CA 90501. The phone number is (310) 328-1925.
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