Patent offices have the statutory responsibility for examining patent applications. So why is it that while some applicants don’t conduct any prior art search before a patent application is drafted and filed, others routinely conduct their own prior art searches before they file?
Do the applicant and his attorney really know the metes and bounds of the claimed invention if a prior art search is not conducted before filing? Can a clear patent specification be constructed when the exact scope of the invention is awaiting a patent examiner’s search? Should patent applicants be asking their attorneys to do pre-filing searches? Does the failure of applicants to conduct searches contribute to extended patent office delays for all applicants? Could failure to search lead to unmanageable patent thickets and costly and unnecessary patent litigation?
While a pre-filing prior art search and an information disclosure statement listing the relevant prior art references are useful to the patent examiner and the public, I believe a pre-filing prior art search is most useful for patent applicants themselves. It is useful to them for two reasons.
First, it is essential for assessing the patentability of an invention and determining the exact scope of the expected claimed invention. How can an applicant be reasonably confident about the scope of expected patent claim coverage if a search has not been done? The precise use of words to define and distinguish always is difficult, but this process is made significantly harder if it is attempted in the absence of any contextual background other than the inventor’s personal and sometimes anecdotal understanding of the art. Attempting to define an invention in the absence of a thorough prior art search is akin to throwing darts at a target blindfolded. Since any amendment to the claims made during prosecution will have the effect of narrowing both the literal and equivalents scope, the closer the granted patents claims are to those initially presented the better. Furthermore, if the initial search done by the applicant is as comprehensive as the one done by the patent examiner, it should follow that the pendency of the application will be shorter and the patent more likely will be valid.
The second self-interest reason for conducting a pre-filing patent search is to proactively avoid infringement of others’ patents. One should not proceed to commercialize a new product, process or method without knowing whether others have already patented or are attempting to patent the same thing. Knowing the patent landscape at the time of invention is necessary for sound strategic business decisions.
It costs money to develop the capability and skill for inventors and patent owners to utilize sophisticated databases to conduct comprehensive pre-filing searches. Some technologies have well established nomenclatures and search taxonomies while others lack definitional uniformity. Each technology goes through a period of development during which industrial terminology and jargon become standardized. But even if there is a current state of confusion in the nomenclature of a new technology, a patent applicant and his attorney should take the time and care to analyze the existing patents in order to make better decisions before filing.
It is smart to be actively involved in analyzing your inventions.
Comments are always welcome.
Marc S. Adler