Sibanda & Zantwijk

When coming up with an invention, most peoples’ first reaction is to call a patent attorney. A year or so later, after incurring substantial patenting costs, the inventors often regret not conducting a patentability search first.

 

A search is an extremely powerful tool. The results can:

- direct you to the novel aspects of your invention, and thereby ensure that you

  focus your time, efforts and resources on aspects that are worthwhile and

  patentable;

- awaken you to alternatives that you had not previously considered;

- raise your awareness of other patents that may effectively block your path to

  commercialisation;

- disappoint you into recognising that the invention is not patentable;

- ensure that your patent is drafted in a manner that will not require a subsequent,

  expensive amendment; and

- focus the patent attorney’s attention onto the patentable aspects of your invention,

  thereby reducing your drafting costs.

 

The unsurprising truth is that if you do not conduct a search yourself, or instruct your patent attorney to conduct a search on your behalf (at a substantial cost - albeit that www.mypatent.co.za offers affordable search services), no search will be conducted. True, you will most probably receive a search report from a foreign patent office in about 18 months’ time and after having incurring more than R35,000 in patenting costs. However, the same results that would have proved constructive prior to filing the patent are by this stage anticipated with fear. The same instrument that a year and a half ago would have proved a useful tool has now transformed into an axe – necessitating expensive amendments to the patent or, in extreme instances, abandonment of the patent application.

 

Various website are available free of charge to conduct comprehensive searches. A list of these search sites is available at www.zaiplaw.co.za, together with a comprehensive search manual (738KB).

 

For example, while practicing at one of the large patent firms, there were two “inventions” that you were guaranteed to consult on each year: airplane tyres or wheels with fins to pre-rotate the wheels prior to landing; and a car with brake lights on its grill that confirm to oncoming traffic the driver’s intention to turn.

 

At first, both of these ideas appear exciting. And, one’s gut feel is that, if previously invented, they should by now have been commercialised. However, the results from the following simple search queries in the US Patents and Trademarks Office website (www.uspto.gov) quickly dispel any thoughts that the inventor may have had of patenting:

 

Aeroplane fins:

ttl/(airplane or aeroplane or aircraft or airborne) and abst/((tyre or tire or wheel) and (rotat$ or spin$ or turn$) and wind) and landing

 

Brake light:

ttl/(brake and (indicator or light or signal)) and abst/(automotive or automobile or vehicle or car or motorcar or motorvehicle) and (front or grill or bonnet)

 

Searching principles for the uspto.gov website are relatively straight forward. Devise a search string by selecting words that you would expect to appear in: the title (ttl/); the short summary of the invention / abstract (abst/); and the body of the patent specification (without any prefix). Once a “ballpark” patent is found, see the patents that it refers to (i.e related earlier patents) by going to the “references cited” section of the patent specification; and the patents that refer to it (i.e. related subsequent patents) by either clicking on the “referenced by” link or inputting ref/(patent number) in the search query field.

 

To view the patents in the uspto.gov website you may need to download the free viewer available from www.alternatiff.com.

 

The exercise should take a few hours and yield a volume of documents that should keep you entertained for days. Alternatively you could instruct your patent firm to conduct the search at a cost of approximately R500 per hour together with a reporting fee of R2-3,000. Personally, I would prefer to utilise my bandwidth and spend some money on good coffee and a printer cartridge.

 

Anthony van Zantwijk

Sibanda & Zantwijk

 

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