Scarinci Hollenbeck, LLC, LLCScarinci Hollenbeck, LLC, LLC

Firm Insights

The Benefits Of A Patent Search Are Worth The Cost

Author: Scarinci Hollenbeck, LLC

Date: May 21, 2016

Key Contacts

Back

No one would want to complete the process of applying for a patent only to find out that it has already been claimed.

Patent Search

There generally are two types of inventors: the individual inventor/small company and the large, corporate research and development (R&D) groups.

  1. R&D groups generally have a significant advantage over smaller entities because they are well-connected in the intellectual property community and they have ample capital.
  2. Individual inventors have to function with fewer resources and a smaller network of colleagues.

The good news for the individual inventor is that they can “level the playing field” with the use of a professional patent search.

There are dozens of companies that are dedicated to performing exhaustive patent searches for individual investors and small businesses. Because a searcher has access to the same proprietary databases as the US Patent and Trademark Office (USPTO), he or she can notify inventors of any previous iterations of the invention-otherwise known as prior art. Something is considered prior art if it consists of other patents, applications, or publications that have been published and are “out there” already.

A patent search adds an additional expense to the process, but it is one that is well worth it.

Evaluating a patent searcher’s report offers a glimpse into the mind of the USPTO and what a Patent Examiner is going to consider when reviewing an application. This level of insight can be invaluable given that most patent applications are denied the first time they are filed and you can know what the overall “patent landscape” looks like when drafting and prosecuting a patent application.

“Prosecuting a patent” is the term given to the sometimes long and arduous back-and-forth process between the inventor and the USPTO regarding what should be protected, how the invention is different from prior art, and the breadth of protection that should be granted. As the name implies, prosecuting a patent is a semi-adversarial process.

Boiled down to basics, prosecuting a patent often involves examining the components of an invention and asserting the uniqueness of one or more of those components. For instance, if an existing product is composed of components A + B + C, an inventor may successfully prosecute a patent using the components A2 + B + C. In other words, it is prudent to methodically develop the new, innovative variations applied to an established patent (A2 in this example).

Investing in a patent search helps inventors identify any potential problems they may encounter during the prosecution of a patent. Once the weakness is known, we can begin to focus on the solution, whether it be changing a component of the invention or using different language in the drafting process. It’s always good to know what is out there and what the possibilities are, and a search can provide that understanding.

No Aspect of the advertisement has been approved by the Supreme Court. Results may vary depending on your particular facts and legal circumstances.

Scarinci Hollenbeck, LLC, LLC

Related Posts

See all
Corporate Consolidation and Antitrust Issues in Mergers post image

Corporate Consolidation and Antitrust Issues in Mergers

Corporate consolidation involves two or more businesses merging to become a single larger entity. The result is often a stronger and more competitive company that can better navigate today’s competitive marketplace. What Is Corporate Consolidation? Corporate consolidation closely resembles a basic merger transaction. The primary difference is that a consolidation creates an entirely new business […]

Author: Dan Brecher

Link to post with title - "Corporate Consolidation and Antitrust Issues in Mergers"
What is Business Law and Why Is it Important? post image

What is Business Law and Why Is it Important?

Business law plays a critical role in nearly every aspect of running a successful enterprise, from negotiating a commercial lease to drafting employee policies to fulfilling corporate disclosure obligations. Understanding what is business law and your legal obligations can help your business run smoothly and build productive relationships with clients, business partners, regulators, and others. […]

Author: Dan Brecher

Link to post with title - "What is Business Law and Why Is it Important?"
Corporate Transactions: Best Practices for Successful Deals post image

Corporate Transactions: Best Practices for Successful Deals

Corporate transactions can have significant implications for a corporation and its stakeholders. For deals to be successful, companies must act strategically to maximize value and minimize risk. It is also important to fully understand the legal and financial ramifications of corporate transactions, both in the near and long term. Understanding Corporate Transactions The term “corporate […]

Author: Dan Brecher

Link to post with title - "Corporate Transactions: Best Practices for Successful Deals"
How to Conduct a Fair and Legal Employee Termination in 2025 post image

How to Conduct a Fair and Legal Employee Termination in 2025

Ongoing economic uncertainty is forcing many companies to make tough decisions, which includes lowering staff levels. The legal landscape on both the state and federal level also continues to evolve, especially with significant changes to the priorities of the Equal Employment Opportunity Commission (“EEOC”) under the Trump Administration. Terminating an employee is one of the […]

Author: Angela A. Turiano

Link to post with title - "How to Conduct a Fair and Legal Employee Termination in 2025"
Admin Dissolution for Annual Report: What You Need to Know post image

Admin Dissolution for Annual Report: What You Need to Know

While filing annual reports may seem like a nuisance, failing to do so can have significant ramifications. These include fines, reputational harm, and interruption of your business operations. In basic terms, “admin dissolution for annual report” means that a company is dissolved by the government. This happens because it failed to submit its annual report […]

Author: Dan Brecher

Link to post with title - "Admin Dissolution for Annual Report: What You Need to Know"
What Is Antitrust Litigation Law? post image

What Is Antitrust Litigation Law?

Antitrust laws are designed to ensure that businesses compete fairly. There are three federal antitrust laws that businesses must navigate. These include the Sherman Act, the Federal Trade Commission Act, and the Clayton Act. States also have their own antitrust regimes. These may vary from federal regulations. Understanding antitrust litigation helps businesses navigate these complex […]

Author: Robert E. Levy

Link to post with title - "What Is Antitrust Litigation Law?"

No Aspect of the advertisement has been approved by the Supreme Court. Results may vary depending on your particular facts and legal circumstances.

Sign up to get the latest from our attorneys!

Explore What Matters Most to You.

Consider subscribing to our Firm Insights mailing list by clicking the button below so you can keep up to date with the firm`s latest articles covering various legal topics.

Stay informed and inspired with the latest updates, insights, and events from Scarinci Hollenbeck. Our resource library provides valuable content across a range of categories to keep you connected and ahead of the curve.

Let`s get in touch!

* The use of the Internet or this form for communication with the firm or any individual member of the firm does not establish an attorney-client relationship. Confidential or time-sensitive information should not be sent through this form. By providing a telephone number and submitting this form you are consenting to be contacted by SMS text message. Message & data rates may apply. Message frequency may vary. You can reply STOP to opt-out of further messaging.

Sign up to get the latest from the Scarinci Hollenbeck, LLC attorneys!