What it Took (Part 3) – My Journey Launching a New Business and Becoming a New Father

By randy • January 27th, 2009

Part 3: Your First Patent Searches

Welcome to my series “What it Took – My Journey Starting a New Business and Becoming a New Father.”

We’ll look back over the last 2 roller-coaster years and use my experiences with bringing the SurfShelf to market as a case study of the do’s and don’ts of starting a new business.

Last time we talked about coming up with the crazy idea and building a rudimentary prototype. This week we’ll talk about doing a quick patent search to make sure there isn’t a patent out there that will stop you from marketing and selling your product.

Patent illustration for "Shark Protector Suit". Why didn't I think of that?

As I’m sure you know, a patent is a set of exclusive rights granted by the United States Patent and Trademark Office (USPTO) to a particular idea for a fixed period of time (17 years in the U.S.). The rights granted by the patent exclude others from making and selling the invention. Therefore, it is important to determine if a patent has been issued to another inventor that would exclude you from manufacturing, marketing and selling your idea.

It is very important to have a general understanding of how patents work. Patents can be very complicated and I will not go into excessive detail regarding the intricacies of patent law, but I will explain a few fundamentals that will help you determine whether or not an existing patent is blocking your journey.

First, there are two types of patents that you will run across: the utility patent and the design patent. The type that you are interested in is the utility patent. The utility patent is a patent on the functionality of an invention while the design patent is simply a patent on the aesthetic design of the invention (i.e. how it looks).

Within the utility patent application, there are several different sections including the specification, the drawings and the claims.

The specification is a detailed description of the different aspects of the invention and may include several different sections including the field of the invention, the background of the invention, the summary of the invention, a brief description of the drawings and a detailed description of the preferred embodiments of the invention. The detailed description of the invention will go through every detail of the invention and will refer to the numbered elements shown within the patent drawings.

Now, while the specification is extremely important, the claims of the patent are what actually determine what can and cannot be made and sold by others. The claims are a series of statements at the end of the patent that state what parts of the invention are actually covered by the patent. So it is the claims that you are most interested in.

For instance, the first claim for the patent of a “Shark Protector Suit” is:

1. A suit for protecting its wearer from attack by sharks comprising:

rubber suit means for substantially completely covering the wearer’s body;
closed helmet means including a face mask attached to the suit means for substantially completely covering the wearer’s head;
glove means attached to the suit means for substantially completely covering the wearer’s hands;
shoe means attached to the suit means for substantially completely covering the wearer’s feet;
elongated spike means for repelling sharks extending outwardly from the suit means and helmet means;
and rigid plate means attached to an outer surface of the suit for protecting the wearer.

So if the shark protector suit that you have invented is different than what is claimed, you may still be able to make your fortune!

There are several websites that you can go to in order to perform your search for prior art (“prior art” is the term used by the Patent Office to refer to existing patents).

The United States Patent and Trademark Office has an advanced search functionality that will allow you to search through the millions of patents that have been granted.

In addition, Google Patents also has a large database of patents (7 million) that you can search as well.

I recommend doing detailed searches using both resources as I was actually able to find patents on one service that did not show up on the other and vice versa. (I was told that this should not happen, but in fact it did).

The easiest way to start is to come up with a list of keywords and/or descriptions that describe your idea. Then, use the two resources above to perform searches on these keywords.

It is very likely that you will find prior art on your invention. But don’t panic! Your method of accomplishing the invention may be new and improved compared to the existing patent. This is what I found when I did my search for treadmill laptop holders. There were indeed a number of inventions relating to this idea, but none of them were what I had envisioned. Therefore none of them stopped me from producing the SurfShelf.

The first thing I always did was I examined the patent diagrams carefully. A picture tells a thousand words and you can usually see right away if the patent is similar to your idea. If it seems similar, read the entire patent and pay special attention to the claims to see if they describe in detail the way you envision developing your invention.

If it seems like the patent describes your exact idea, but you wish to pursue it anyway, I would highly recommend getting the professional opinion of a patent attorney to see what your challenges may be. Who knows? He may find that the patent doesn’t block you and that you are free to pursue your invention.

And if you don’t find any prior art regarding your invention, congratulations, you are ready to take the next step. But just because you are not blocked by an existing patent, this does not necessarily mean that you yourself can obtain a new patent on your idea. However, don’t worry about that right now; we’ll get to that later.

In fact, the next thing to do is to file what is called a “Provisional Application for Patent”. This is easy to do and will give you the date stamp of your idea.

So that’s what we’ll talk about next post. See you then…

Randy