Patents
3. The Patent Search
Before filing a first patent application for an invention, it is generally advisable to have at least one patentability search carried out in order to determine the state of the art, and thus the likelihood of obtaining a worthwhile patent. Moreover, the search allows the patent agent to draft a better application, having the benefit of knowing at least some of the prior art patents he will have to overcome during the prosecution of the application.
A preliminary patentability search can be carried out either at the Canadian Patent Office located in Hull, Quebec, or at the United States Patent Office located in the Washington area. We normally recommend that a search be done at least in the United States Patent Office because there are many more patents available for searching at the United States Patent Office, and because they are better indexed for searching. The normal turn around time for such a search is six weeks, but this can be expedited to some extent by using faxes, courier services or by personal attendance at the Patent Offices in urgent cases.
Computer searches are available at significantly less cost than manual searches, and with less turnaround time. However, they are not as reliable or as thorough as a manually conducted search, for several reasons which we can describe to you in person. Computer searches are, however, more effective for specific purposes, such as locating all patents in the name of a specific entity, and are, in any event, better than not conducting any preliminary patentability search at all.
To carry out a patentability search, your patent agent should be provided with clear sketches or drawings of the product or the process, if it can be illustrated. Preferably the drawings should be accompanied by a written description that refers to the drawings by means of reference numerals shown on the drawings. If you book an initial consultation with our office, we will provide you with a disclosure form to be completed before your attending at the initial consultation. The disclosure form sets out in more detail the types of materials to bring to the initial consultation. Good formal drawings are not required for searching purposes (in some cases, photographs may be sufficient), but such drawings must eventually be prepared for the filing of an application. We are able to take digital photographs of your prototype for searching purposes, if no drawings are available.
The search report that we provide to you will not only provide you with copies of the patents located by our searcher, but also a written opinion, based upon these patents, discussing your chances of obtaining a worthwhile patent for your invention, with emphasis on the issues of novelty and unobviousness. We will not only tell you that "something" is patentable, but what features of your invention, if any, are patentable. Beware of firms or individuals who do not provide you with such a written opinion, as copies of the patent references without the professional analysis contained in the written opinion are of significantly less value. As with most things, the axiom "You get what you pay for!" applies.
Sometimes an invention represents an improvement over an existing product of which the inventor is aware. In such cases, it is imperative to inform your patent agent of the previously known product, at least in a general way, and to indicate the differences and the attendant advantages that your product or invention has over the known item. Trade literature, technical manuals and the like which indicate the state of the relevant industrial art are also useful to the patent agent when he is assessing your chances of obtaining a worthwhile patent.