Before investing in any patent application, it is advisable to seek counsel and conduct patent searches for any possible blocking patents.  Often times, inventors may have come up with a product that has already been patented and patent searches could help the inventor assess the scope of protection available, where to file patent applications, and take measures to prevent possible infringement of existing patents.  Results from patent searches could also aid in drafting the patent application and, ultimately, in deciding the scope of the claims.

How do patent searches work?  Counsel typically sets up an inventor disclosure interview to discuss key innovations in the invention and strategize where patents protection would be best served.  For example, if key manufacturing bases or competitors are located in Germany, one or more patent searches could be conducted in the German Patent Office or the European Patent Offices.  After the disclosure interview and strategies are agreed upon, counsel summarizes the key innovations for a professional prior art searcher and prepares instructions for the patent searches.  The prior art searcher, in turn, conducts patent searches by searching records from the relevant patent issuing bodies, such as the U.S. Patent and Trademark Office and the European Patent Office.

Patent searches could include investigating and identifying classification numbers, key words, inventor names, competitor names, and technology or art units associated with or potentially related to the innovation.  The prior art searcher uses this information and summarizes the results of the patent searches and prepares a report.  Counsel then reviews the patent searches and discusses the results with the inventor.  Based on the references found in the patent searches, counsel and the inventor could decide the strategy going forth.  The strategies could include conducting secondary patent searches on a particular aspect of the innovation or a particular company or inventor name that appears in the patent searches.

Ultimately, counsel could use the results from the patent searches to help draft a strong patent application for the invention (or avoid any overlaps in protection).  For example, the results of the patent searches could indicate that the technology space is not well developed and that there may be potential for the invention to receive broad patent protection.  In other cases, the patent searches could help the inventor make an informed business decision on whether to proceed with investing in a patent application.  For example, the results of the patent searches could reveal several references that are almost on point with the invention.  In these cases, the inventor may decide not to pursue the patent application(s) based on the results of the patent searches.

If you are interested in additional information on patents, or if you have any questions regarding patent laws or our patent protection services, , please contact one of Dallas patent lawyers.   We offer an array of services in the areas of intellectual property including patents, trademarks, copyrights, trade secrets as well as intellectual property litigation and enforcement.  Detailed information on these and other services is available at http://kk-llp.com/.  In addition, we act as local counsel in patent, trademark, copyright, trade secret, and commercial litigation cases in the state and federal courts in the Northern District of Texas.  Further information on our local counsel practice is available at http://kk-llp.com/localcounsel.asp.