Читать книгу Intellectual Property Law for Engineers, Scientists, and Entrepreneurs - Howard B. Rockman - Страница 126

Since one of the most important aspects of obtaining a patent on your invention is the comparison of your invention to the state of the prior art, the best way to gain an understanding of the content of the prior art before committing to the expense of filing a patent application is to conduct a patentability search prior to the preparation of a patent application. The search occurs after the patent attorney gains a full understanding of your invention from the disclosure meeting, and after you have described to him or her all the prior art materials with which you are familiar. Since the patentability search expands the scope of knowledge available to the inventor and the patent attorney regarding technology related to the invention, the patentability search provides the first real opportunity to explore the prior art surrounding your invention in significant detail. This search is optional and is not a requirement for obtaining a patent, but it is very helpful.

The most complete and accessible library of prior art is housed in the electronic patent and published patent application files of the U.S. Patent and Trademark Office. U.S. patents issued since the year 1790 can be searched on the U.S. Patent & Trademark Office website (www.uspto.gov), and further prior art can be accessed on other available websites. It is possible for an inventor to make his or her own preliminary patentability search; however, it is usually wise, and cost‐effective, to have an experienced professional conduct the search.

The patent searcher will normally provide the patent attorney with copies of or links to relevant patents, literature, and other materials uncovered during the search, but the searcher normally does not provide her or his patentability review or evaluation of the patents. Nor does the searcher usually provide a legal patentability opinion. The results of the search are commonly forwarded to your patent attorney, who conducts an evaluation of the content of the prior art and provides you with a legal opinion as to whether or not your invention is sufficiently novel and non‐obvious over the prior art to support the granting of a patent. The report you receive from your patent attorney should (a) set forth an evaluation of each relevant prior art reference uncovered by the search, commenting on what each reference does and does not disclose about your invention, and (b) comment on whether any combination of the uncovered references might be used by a Patent Examiner to support an argument that your invention is obvious in view of the teachings of these combined references.

It is important to keep in mind that in certain circumstances, it may be practical to forego a search before filing a patent application. Thus, if the subject matter is too difficult to search, or the product has been scheduled for production before a search can be conducted, or where the inventor has years of experience and a keen knowledge of the prior art, you may decide that it is not cost beneficial to conduct a search and that it would be better to file the patent application as soon as possible.

If the search reveals that the invention is not patentable, this will save the inventor the cost of filing the patent application. On the other hand, if the search reveals that the invention is potentially patentable, the search provides an additional valuable function in furnishing useful background information and advice to the patent attorney as to the scope of the prior art, enabling the patent attorney to draft more effective patent claims covering your invention over the prior art. Further, as stated previously, the patentability search produces a library of technical information the inventor can use in further development of the invention to which the search was directed, or improvements to his or her invention. This, of course, must be done without infringing any of the unexpired patents uncovered by the search. The subject of patent infringement will be covered in Chapter 17.