Conducting the Search Yourself
Patent, trademark and copyright information is a matter of public record, so you can search the appropriate databases yourself. Federal databases are even available online.
That said, conducting patent and trademark searches is not always easy. Similar inventions can be described using many different words, especially patents filed decades ago. You don't need to go back more than 20 years to avoid patent infringement, but it's worth doing so to ensure your invention qualifies for a patent. For a trademark, you may need to decide if a common law search is appropriate.
Patent Searches
A thorough patent search includes all "prior art," including issued patents, published applications and inventions described in other sources such as journal articles or other literature. You will also need to find not just identical inventions, but also similar ones.
You can begin your search in several places:
- The United States Patent and Trademark Office (USPTO) -Issued patents and published applications are in two databases accessible from the USPTO website. You will need to start by identifying classes and subclasses for your invention and then do a search on a variety of keywords to find all relevant documents. The site offers help guides and tutorials to help you search.
- Patent and Trademark Resource Centers -These exist in libraries across the country, and their trained staff can offer expert search assistance.
- Google's Patent Search -Its data comes directly from the USPTO and European Patent Office databases, and you may search by keyword, inventor name and other criteria. You can also do a prior art search here.
- Relevant literature -Journal articles and other authoritative sources within your industry can help you uncover prior art.
Trademark Searches
You can find federally registered marks and pending applications using the USPTO's Trademark Electronic Search System (TESS). The results also tell you if a mark is still live (registration is still active), and link to more information about it in the Trademark Status & Document Retrieval System.
You may also use a search company, such as Trademarkia, where you can start your search for free and then have the company file your application for a fee. The fee includes a thorough trademark search.
The USPTO does not consider common law marks in evaluating your application, but if a mark similar to yours is already in use in a geographical area where you'd like to do business, you may not be able to use yours there. You can search the Internet, state trademark databases and relevant industry publications or databases for common law uses of your preferred mark.
Copyright Search
A copyright search is a little different, because you are most likely looking for copyright protection status of a specific work you would like to use a portion of, rather than comparing your work to what's already out there.
That said, if you are looking for copyright information, the Copyright Office is the place to start. Its online database has registration and renewal records from Jan. 1, 1978, to the present. To find information about works registered or renewed prior to 1978, you will need to use the copyright card catalog in the Library of Congress. If you are not nearby, Copyright Office staff will conduct a search by request for an hourly fee.
If You Find Similar Intellectual Property
If you do not find any similar IP, you are free to use, manufacture and/or sell your creation and file for protection. If you do find similar creations, you may still be able to use, and possibly protect, yours under certain conditions. These include:
- Your invention has non-obvious differences from similar inventions.
- Your trademark is for a completely different product or service.
- The invention was never patented or its protection has expired (you may legally use it but not patent it).
- The USPTO has declared the trademark dead (be sure it has not been revived).
- You don't intend to do business in the area where a similar common law mark is already in use.
If your copyright search shows the work is in the public domain, you are free to use it. If the work is protected, you will need to ask permission, such as with a copyright request, unless your use falls under fair use, such as educational or commentary.
Working with an Attorney
As you can see, database searches can be complicated, especially patent searches. If you're feeling overwhelmed or unsure that you have conducted a thorough search, it's a good idea to consult an attorney experienced in the area of intellectual property law you are interested in.
An attorney can also help you evaluate the IP you do find to determine if yours is sufficiently different to qualify for protection and ensure you're not infringing on someone else's IP.
This article contains general legal information and does not contain legal advice. Rocket Lawyer is not a law firm or a substitute for an attorney or law firm. The law is complex and changes often. For legal advice, please ask a lawyer.
