[Complete Guide] For those who request a patent attorney to conduct a patent search for the first time | Thorough explanation of costs, process, period, and precautions

"I've come up with a great idea. I want to patent it, but I don't know where to start." "I've developed a new product, but I'm worried that I might unknowingly infringe on another company's patent."

In the field of new business and product development, such concerns are endless. The first thing you should consider is "patent search (prior art search)".

However, for those who are hiring a patent attorney for the first time, the patent industry can seem daunting. You may be worried about things like, ``How much will it cost?'' ``Is it okay to consult with someone who is still in the idea stage?'' ``I'm afraid the conversation won't progress because of all the difficult technical terms.''

In this article, an active patent attorney who has handled numerous patent searches will thoroughly explain the basic knowledge, cost considerations, process of requesting, and key points to avoid failure that customers requesting patent searches for the first time should know, using as little technical jargon as possible.

By the time you finish reading this article, you should feel less anxious about patent research and feel confident in taking the next step.

1. Why is a patent search (prior art search) necessary?

In the first place, why do we need to spend money and time on "investigation"? It's not just because I want to know if I can get a patent. This is because there are "three major benefits" that are essential for business success.

① You can reduce unnecessary costs and time (investment decisions)

A patent application costs at least 300,000 to 500,000 yen, including stamp fees paid to the Japan Patent Office and document preparation fees for a patent attorney. If you suddenly apply without doing any research and the application is rejected as a result of the examination saying, ``It cannot be registered because a similar patent already exists,'' all the money and time spent up to that point will be wasted. By conducting research in advance and determining the ``possibility of obtaining a patent,'' you will be able to make a wise business decision whether to ``file an application and compete'' or ``give up (or improve) this time.''

② Get hints on how to create stronger patents

It is not uncommon to find similar technologies (prior documents) as a result of research. However, it is not a "failure". This is because you can clarify the difference: ``The existing technology has feature A, but your invention has new feature B.'' By knowing your competitors, you can create a stronger patent specification that emphasizes your differences from other companies and has a clearer scope of rights.

Patents have a requirement of "novelty." This rule states that it must be "new and not yet known to the world." If you make an announcement on your blog or SNS, exhibit at an exhibition, press release, sell, etc., at that point it becomes "publicly known" (everyone knows about it), and as a general rule, you will not be able to obtain a patent. If you have already made it public, please tell your patent attorney as soon as possible. You may be able to obtain a remedy called the “loss of novelty exception,” but there is a time limit.

Golden rule ②: "Black box period" of investigation

The content of a patent application will be kept secret and not disclosed to the public for 1 year and 6 months from the filing date. In other words, no matter how good a search company or patent attorney is, you will not be able to find patents filed by other companies within the past year and a half. Please be aware that there is always a small risk that ``even though the investigation results were negative (no problems)'', a rival had actually filed an application during that period.

Golden rule 3: Disclose information openly (there is a duty of confidentiality)

Some people may be afraid to tell others about important ideas that have not yet been legalized. However, patent attorneys are subject to extremely strict confidentiality obligations under the Patent Attorney Law. This is a heavy duty that can result in disqualification if you violate it. On the other hand, if you hide information such as ``Actually, we used a product called 〇〇 from another company as a reference,'' the premise of the survey will be incorrect and the survey results will become meaningless. Please share all information for accurate investigation.

5. Interesting "cost" and "period (schedule)"

What you are most concerned about is "How much will it cost?" and "When will it end?" I will give you a general view of the market. *It varies depending on the complexity of the technical field and the size of the office.

Estimated cost (excluding tax)

[Risk of choosing only based on low price] "Cheap surveys" also exist, but there are cases where there are not many search keywords, or there are cases where the search is performed only mechanically and is not checked by human eyes. If you overlook an important patent and apply for it, and it is later rejected, you are putting the cart before the horse. Choose a firm that can guarantee quality that meets your goals.

Schedule guideline

• Standard delivery time: From formal request 2 to 3 weeks

• Express delivery: 3 days to 1 week from official request (*Costs are generally 20-30% higher)

If you are in a hurry to apply, many offices will be flexible if you let them know at the time of consultation.

6. Smooth even for first-time users! 5 steps from request to delivery

Let's simulate what the process would be like if you actually made a request.

STEP 1: Contact us

We will contact you via the "inquiry form" on our homepage or by phone. All you have to do is tell them that you are considering a patent search.

STEP 2: Hearing (interview/web conference)

This is the most important part. A patent attorney will discuss the details of your invention in detail.

• What kind of problem (problem) does this invention solve?

• What is different from the conventional one?

• What is the specific structure and mechanism?

★Points: It is difficult to explain things verbally, so it will go much more smoothly if you can provide simple hand-drawn diagrams, photos of prototypes, specifications, etc.

STEP 3: Proposal/Estimate

Based on the content of the interview, a patent attorney will design ``what keywords and scope to investigate'' and present the cost and delivery date.

STEP 4: Survey implementation

After a formal order is placed, a patent attorney or specialized searcher will conduct a search using the Patent Office database and paid commercial databases. It picks up relevant patent publications from a huge number of patent publications and reads the contents.

STEP 5: Report delivery and explanation

A "report" summarizing the survey results will be delivered to you. We don't just send you a list of similar patents.

• "The possibility of registration is about 〇〇% (A judgment/B judgment, etc.)"

• Professional advice (opinion) regarding future strategies such as "Let's emphasize the structure of 〇〇 in the application in order to differentiate it from this prior art" is described. It is also possible to receive an explanation of the contents of the report in an interview.