The Patent Minefield

One of my clients supplied this metaphor.  He suggested that a patent search is like exploring for gold in a minefield.   

An inventor can only patent that art which has not already been patented or disclosed by someone else.   If the inventor files a patent application without a proper prior art search he risks "stepping on a mine",  that is his patent application may be denied by the patent office examiners because it was "taught by the prior art",  that other patent that he was unaware of.   Worse, even if the patent is granted, due to ignorance of prior art, someone may come out of the woodwork , sometimes years later and sue the inventor for infringing their patent.

 

There are actually individuals and companies (called Patent Trolls by some) who actively employ a strategy of filing patents they never intend to commercialize but hope eventually to use in a lawsuit against someone else.

At BML our job is to search that minefield and put flags on the locations of the mines.   That way the inventor can adjust his patent application to cover the most   "gold bearing" territory as possible without stepping on one of those prior art patents. 

We start by determining the territory that is covered by the clients invention by preparing a "Search Profile"  --This tells us where to look in the online patent databases for prior art which is close to the clients invention.   Sometimes we find a patent directly atop the invention.  Then we can issue a "High Flash"  email warning to the inventor to beware.  The inventor can then adjust his patent or drop it all together.  Depending on where we are in the job he can receive a store credit or save 75% of the search cost.

There is an increasing trend today to save money by not doing a patent search, arguing that the patent office will do it anyway.  That is an very  risky strategy as the inventor may spend a substantial amount of money on a patent application and on "office actions"  with the patent office before giving up or extremely restricting his patent due to prior art he would have known about if he had ordered a search to be done.