We have found that the best method of evaluating whether to proceed with a patent application is to conduct a patentability search in the United States Patent and Trademark office in Washington, D.C. You disclose your invention to us and then we, or our Washington, D.C. associate, will conduct the search. In conducting the search, all properly classified and filed U.S. patents which are pertinent to the invention are reviewed and copies are ordered for your records. We then draft a patentability opinion letter indicating the scope of the patent protection which we feel is available for the invention. Foreign patents, periodicals and textbooks are not searched since they are not well classified. consequently, a patentability search is approximately 90% effective in locating any given piece of pertinent prior art.

The results of the search may help you to better define the invention or to identify alternative embodiments of the invention, and may help us to draft the text of the patent application and to draft claims in a way which would give the broadest possible protection to the invention.

Filing without a patentability search, though possible, is not recommended. Please also appreciate that the scope of a patent search is necessarily confined by cost considerations. Therefore, while the search is calculated to give the best value for the money, the search could always, with additional funding, be extended into additional Patent Office classifications, the technical literature and foreign art databases. With additional funding, we could also run an "integrity check" of classifications to determine which references were missing from the appropriate files at the Patent Office so that these references could be located elsewhere.

Please also be advised that the scope of a patentability investigation is quite different from an infringement investigation and study, and the results of a patentability search should not be considered dispositive of all infringement questions.

Copyright 1995 Michael J. Colitz, Jr.