Why pay for a preliminary patent search?

Wednesday, January 30, 2008

United Inventors Association, http://www.uiausa.org/Default.aspx

Ask The Experts: Why pay for a preliminary patent search?

Q - Local patent lawyers charge around $3,000 to set up a patent. Aren't they going to want to do their own search before they write a patent for me? What good is a patent search by a helpful, inexpensive Innovation organization? I still need to get a patent, right? That means I pay the Innovation org between $500-$900 to do a search & give me an opinion on marketability, etc. Then I still have to pay the patent lawyer anyway. Any help you can provide is greatly appreciated.

A - You ask good questions, but some are very hard to answer.
To start with, you should be happy with your "local patent lawyer(s)" charge for "setting up a patent," which we assume covers >writing the patent specification, claims, abstract, required forms and information disclosure statement... but does not cover the required government fees.

For your information, the latest survey (2007) by the American Intellectual Property Law Association reports the average charge (depending on region of USA) as ranging from $5648 to $8410...with overall average nationwide as $7012 - - utility patent application on invention of minimal complexity...e.g., 10 page specification, 10 claims. So you should either rejoice or check your $3000 firm's references to see if they've had any complaints about poor work. Law firm charges for patent searches range, on average for inventions of minimal complexity, around $1000 including a professional 'patentability' opinion by a patent attorney or patent agent.

Thank you for characterizing the UIA as a "helpful, inexpensive Innovation organization," but the UIA does not perform patent searches and is not qualified to offer professional opinions as to patentability. Instead, UIA utilizes contracted services of qualified professionals who handle this work at a minimal price and the client receives the report/opinion directly from the professional.

Whether other patent agents/attorneys accept the search & opinion results really depends on the particular firm. Some firms want to perform a new search because they do not know who or how the initial search was performed...some want to perform a new search because they can improve their profit margin...and some accept the results of an earlier search without question.

In any case, the inventor can direct his/her attorney/agent to proceed with or without the earlier search results...or can direct the patent attorney/agent to make NO search whatsoever, since current patent law and rules of practice to not require a preliminary search. We should also mention that many companies and individual inventors have more than one search performed as standard procedure in an effort to learn as much as possible about the "prior art" before filing an application.

It's important to note that there can be no guarantee that all of the most material or pertinent prior art will be uncovered in a search performed by professional searchers or by the patent examiner.

As for justification for paying for the "UIA search" we would say that it is an important initial step in viewing the technology landscape to determine "what's out there," and besides, the search can help avoid paying for another search when engaging a patent agent or attorney...or, if prior art is found at the early stage, the search is justified by the savings of $3000 to $8400 - - depending on the quality of your professional representation.

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