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[HarrisonBergeron]

I came up with something which I believe is novel.  I have been a hobbyist in the field (aviation) for many years.  I downloaded and skimmed every patent in the USPTO categories in which the invention should have been classified (several hundred patents since the Wright Brothers got off the ground), and none touch upon it.  I strongly believe that it would have been patented in the U.S. if it had been thought of before.

Does this allow me to check the box on the application saying that I have performed a patent search?  Or do I need to look more broadly before doing so?

Many thanks!

[JimIvey]

Check what box?  What form are you using?

Patent applications typically aren't forms, although forms can and often do accompany a patent application when filed.

Regards.

[reed batten]

I would suggest that you contact a patent examiner (preferably, a primary examiner)in the aviation art for a field of search.
You might also consider searching the pertinent international class.

[reed_batten]

Did you search your invention by class and subclass??

[HarrisonBergeron]

Did you search your invention by class and subclass??

I'm not sure of the terminology.  I looked up the subclasses that this invention would have to fall into, and went through them in full.  In the case of this device, I strongly believe it would be patented in the U.S. if it were patented anywhere, as the U.S. is one of only two (possibly three) markets for it, and is the only one of any real size.

The form I mean is the "Petition to Make Special" in which they ask whether a "special search" was performed.  (I might also be able to mark that "a manufacturer is available" -- I plan to make it myself IFF I get the patent, and have already found an engineering firm with experience in the niche.)  I would prefer to get the patent issued sooner rather than later, assuming I haven't been beaten in the last year or two, since under the current rules I don't see an advantage in delaying issue, and I can go into production in less than a year anyway.

[Isaac]

You can check the box if you believe that you have made a "careful and thorough search of the prior art".

You have to make the petition on one or more of the criteria described in the MPEP under section 708.02.  Some of the rationale require paying a fee while others do not.   Some of the categories require special showings to be made.  I'd recommend taking a peak at the MPEP if you have not done so already.  

[GRS Research]

Hi HB,

Isaac is correct about checking the MPEP, especially if you are contemplating a "petition to make special" which, essentially, is telling the PTO that you have already conducted an extensive patentability search, saving the examiner's time, and your application should be expedited.

A further note though, I would suggest you expand your search past the filed, issued and expired patents to include the nonpatent literature; news articles, websites, technical books, products etc. The nonpatent literature is as important as the patent literature when determining novelty.

Good luck.

[franlorin]

I worked for an SPE at the USPTO in the early to mid 1990s who laughed at the very few petitions in which the applicant submitted a "prior art search" - he said that the examiner simply needed to cite one new subclass to nullify the request, whether the subclass was fruitful or not - he has since been promoted from an SPE to a director

I certainly wonder whether things have changed?

take care,
Fran Lorin
www.patent.0catch.com

[JimIvey]

I don't understand the SPE's/Director's motivation.  How does the Office benefit from rejecting a petition to make special by citing a subclass not searched?  And, where is the requirement that every class/subclass be searched to truthfully make "a statement(s) that a pre-examination search was made"?  The petition doesn't require that the most thorough search possible was made, just that a search was made.  Finding additional references doesn't mean the applicant didn't search.

FWIW, I like to suggest using a professional searcher with a good reputation to do the pre-examination search to avoid assertions that we were "sand bagging" on the search -- intentionally not searching very thoroughly.  But I don't see where the Office verifies the sufficiency of the search.  I always thought the issue would come up during litigation as a possible argument of fraud on the Patent Office.

Regards.

[Isaac]

I'd have to agree with you Jim.  The MPEP says that either a search or a statement that the applicant knows the prior art are sufficient.
Further there is no requirement that the applicant search by class or use any other specific paradigm.

I think the PTO has the discretion to refuse a petition if the search is inadequate, but ...

[jazzfan]

Hello

I paid a patent lawyer lots of $$ to review my own patent search and submit my patent application to the USPTO. I was in good shape as far as U.S. patents were concerned, but I did not do an international search, which I didn't think would be important. It is important! You may want to check this out:
http://ep.espacenet.com/search97cgi/s97_cgi.exe?Action=FormGen&Template=/ep/en/home.hts

Best of luck to you!

[JimIvey]

A complete and thorough search should include all publications, not just patents -- US or otherwise.

It's a popular misconception that only US patents should be searched.  Foreign patents help but don't provide the complete picture.

Regards.

[GRS Research]

Could not agree with Jim more.  If you have limited your search to the patent literature, you have endangered the validity of your claims and limited your patent’s potential value. Prior art exists in two worlds; the patent world and everywhere else. Take a look at the search templates being made public by the PTO to get a sense of the minimum resources used by examiners to evaluate your application, http://www.uspto.gov/web/patents/searchtemplates/class.htm. I say “minimum resources” because examiners, like professional patent searchers, develop their own lists of resources, both hardcopy and electronic, that have proved fruitful in the past.

[Jonathan]

"If you have limited your search to the patent literature, you have endangered the validity of your claims and limited your patent’s potential value. "

Perhaps you more accurately mean that a thorough search will perhaps prompt a patent applicant to more carefully tailor their claims to avoid the found prior art.

Drafting a claim without a thorough prior art search does not necessarily make it invalid or necessarily increase chances for a rejection.

[franlorin]

Could not agree with Jim more.  If you have limited your search to the patent literature, you have endangered the validity of your claims and limited your patent’s potential value. Prior art exists in two worlds; the patent world and everywhere else. Take a look at the search templates being made public by the PTO to get a sense of the minimum resources used by examiners to evaluate your application, http://www.uspto.gov/web/patents/searchtemplates/class.htm. I say “minimum resources” because examiners, like professional patent searchers, develop their own lists of resources, both hardcopy and electronic, that have proved fruitful in the past.

The use of the term "template" is gradually being eroded - the USPTO is apparently acting as its own lexicographer - in the so-called "templates" provided by the USPTO given above, only a list of recommended search databases/resources is given - this is hardly a "template"!

a "template", as understood by anyone who uses a "template", is a model document (not a mere listing of areas to search) that can be modified to obtain a final document, the model document containing informatiion that can be chosen/selected/excluded as desired by the user - what is presented as "templates" at the above link is not a DOCUMENT - but merely a list of resources!

we really should not encourage the USPTO in this radical altering of a well-recognized term - however, if you really want to continue to use "template" to mean simply a list of resources as newly defined by the USPTO, then don't be surprised when conflicts in understanding arise when someone you deal with does not understand what you mean by "template"

better yet, maybe you should create your own new word to replace the previously understood concept of a "template"

Fran Lorin
www.patent.0catch.com