What are the advantages and disadvantages of using online patent databases versus hiring a patent attorney?

I agree, mostly. The limitations of the patent databases include lacking older patents that are not digitized, not providing guidance on how to interpret, and there is no legal advice or assistance. Generally the major patent databases stay up to date. Being able to interpret the prior art that is found to determine if your invention is novel and non-obvious a person having ordinary skill in the art is the point to searching. Validly determining non-obviousness can be complicated. USPTO registered patent attorneys and patent agents are those ones who can help (be sure to verify the credentials on the USPTO website).

Son dos temas diferentes, es necesario tanto utilizar bases de datos de patentes (pagas y/o sin pago) y contar con los servicios de un abogado especialista en propiedad intelectual. Dificultades del uso de las bases de datos: 1. Conocimiento en el manejo de cada base, cada una tiene sus particularidades. 2. Conocimiento en la forma más eficiente de ejecutar una búsqueda (recomendaría contratar a una persona del campo técnico de la búsqueda y con conocimiento en el uso de diversas bases de datos). 3. Costo de la subscripción a bases pagas. Con la información recaudada y analizada se requiere un abogado para dise?ar la estrategia para buscar protección o para litigar en caso de que se estén violando derechos de propiedad intelectual.

A very common comment from inventors "I have not found any prior art relevant to my invention, the invention must be new and inventive!" It is true there are many online free patent databases. The main problem is most inventors are familiar with the technical field and invention but not how to search the database effectively with the choice of keywords and search parameters. As a result, most prior art searches done by inventors may not turn up any relevant prior art (a false negative) or turns up too many to be reviewed (false positives). The end result is often inventors spend more chasing a lost cause.

Ok, so the first three of those are mostly true ... but fourth is an advantage ... 1. The expensive part can be a disadvantage patent applications are well known to cost between $10,000 - $30,000. 2. Registered patent practitioners are generally very responsive but can be unavailable depending on current client counts. 3. It is true there are no guarantees of success when apply for a patent, but patent practitioners can significantly improve the chances. 4. Actually works to your advantage when done properly you want me focused on the technical and legal aspects. Sharing your vision and enthusiasm might feel nice but being sure I understand it is what is most important if you want to get a patent.

The costs and responsiveness is something that can be addressed very early on. You should always choose to work with someone you are comfortable with. The fourth point is actually a reason to use a patent attorney. Inventors may become too focused and attached to the invention and make emotional rather than rational decisions. A good patent attorney on the other hand should be able to take a step back and advise the inventor objectively.

It is all about understanding. In my experience both as an inventor and a patent practitioner (patent agent first now patent attorney) the most important thing for the inventor to believe and feel comfortable with the the patent practitioners understanding the invention. Ask questions, be sure you believe that your patent attorney or patent agent really understands your invention.

“However, before you file a patent application, you need to do a thorough patent search to make sure your invention is novel and not already claimed by someone else.” The quoted starting premise of this article is inaccurate (at least for patent practice in the US). Not only is it NOT necessary to do any search before filing a patent application, it is rarely done in practice, and can even be detrimental in some cases. Every situation is different. Before deciding whether a patent search might be beneficial, a waste of resources, or even possibly detrimental, several issues can be considered. A patent attorney or other professional familiar with the patent system and the whys and hows of patenting can help with this initial decision.

There are more databases that are open source. The inventor can get some suggestions (if they wish to) from patent specialists on doing a search to fetch a prior art with respect to their invention. They will get a basic idea on similar prior arts relevant to their invention. They can go with patent attorneys/patent agents for their second opinion (if they really need it) to have a clear vision.

We have collected our top top 10 questions to ask before hiring a patent attorney in a short article here in LinkedIn ... https://www.dhirubhai.net/pulse/10-questions-ask-before-hiring-patent-attorney-gregory-carson/