Provisional Patient, Must you have a search? Options

[Don]

I've been reading some books, and I am confused about the filing of a Provisional Patent. I realize that by doing this, you set a date for your invention. But, must you spend $200-$600 for a Patent Search before you submit your Provisional Patent? I know you want to use the one year to learn if your product is marketable, etc., but what if you have done a search using your computer and have found nothing, but there may be a drawing, article, or even your patent out there that will, at some point, stop you from getting a patent.

I would appreciate any assistance anyone can give me concerning this matter.

Don

[Vic]

A patent search with a patentability opinion is important to make sure you don't spend money on developing a product that can't be patented or even sold.

Building a prototype, filing for a patent and the product marketing is way more expensive than $240 for a patent search - but you can always risk.

See http://www.inventnet.com/prior_art.html for patent search with patentability opinion.

[Dennis]

Hi Don -

Using your computer is a start. Check the USPTO (US patent office), Espacenet (European patent office), etc. You can also go to one of the patent depository libraries at a nearby library and ask the staff for assistance in doing a patent search.

Use a search engine to check for key words on the internet to see if someone has published a thesis or catalog which discloses prior art that affects you. You can also use a search engine to provide a rough translation of foreign pages - probably well enough to determine if you have something to worry about.

Check with distributers or representatives who work in the industry. Talk with them about benefits of your product (i.e. it drills square holes) without disclosing how it operates. These discussions may provide a starting point for your marketing effort - which is *much* more difficult than your patenting effort. They may also know of products in the industry which affect you; there are thousands of products on store shelves which are not patented, some of which may be prior art which affects you.

Either buy "Patent it Yourself" by David Pressman or take it out at a local library, and familiarize yourself with the patent filing process. You can then decide if you want to spend a few dollars to file a disclosure document at the patent office, or spend a few more dollars to file a provisional patent. I like to file provisional patents myself, and turne the PPA over to a patent attorney to add claims if a regular patent application is justified. Spend time to understand PPAs and the filing proceedure if you file yourself, or you may torpedo any subsequent filing of a regular patent application.

These items can be done for almost no money, and will provide a wealth of information on your competition. Your competitors are among those you should consider contacting as potential licensees, distributors, or contract manufacturers.

Don't sit back once you've filed a document with the patent office, though. Do something every day to further the development and prototyping of the product. You need to establish what the market will bear for your product, and what your manufacturing costs will be. Don't forget to research and include packaging, shipping, and overhead in your costs. You'll need to have an idea of these costs will be if you intend to manufacture and distribute (or retail) your product, and should have a rough idea even if your intention is to license the product.

Happy hunting -

Dennis