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.