Defining the Invention: Searching Before Filing

Dear Colleagues:

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.

Cordially,

Marc S. Adler

Comments

[DJS]

"It costs money..."

You hit it right on the head, but not till the end of your comment, and yet ignored to address the issue!

[Tom Field]

I've been singing that song for a long time. See, e.g., Avoiding Prosecution Estoppel and Saving Money, http://www.ipfrontline.com/depts/article.asp?id=2964&deptid=4 (the latest).

[Bill Heinze]

I have been advocating a similar approach for years, as discussed at http://ip-updates.blogspot.com/2006/07/ipos-adler-on-proactive-patent.html

[Bruce Berman]

Thank you Marc Adler and IPO for a candid and sober perspective on patent searching. Similar thoughts are in my two-part column for IP Frontline, "Patents Don't Kill Innovation, People Do."

http://www.ipfrontline.com/depts/article.asp?id=10113&deptid=3

Bruce Berman

[anonymous]

Marc,

One of the commenters says the reason why more people don't do pre-fiing searches is cost. This may be true for small companies and inventors.

But according to Internet gossip, some of the largest and most profitable companies aren't doing pre-filing searches. Is this because top management is demanding the largest possible number of patents each year within a fixed patent budget? Are these the same managers who are complaining about the cost of litigation?

[Robert Cantrell]

I am trying to recall anywhere in the history of any profession that it has been an advantage to operate with closed eyes. Even Sun Tzu addressed the underlying point of this article 2,500 years ago when he said: "To remain in ignorance of the enemy's condition simply because one begrudges the outlay of a hundred ounces of silver in honors and compensation is the height of inhumanity."

[MaxDrei]

Comment from Europe: What it looks like from here is that, in ROW, when the specification as filed identifies the claimed subject matter, it strengthens rights received at issue but, in USA, on the contrary, it pays off after issue when the specification as filed is vague about what the invention is.

In fast-moving fields, no search will bring the closest art to light, because it won't be 18 month A-published till after you have filed your application. Again, in ROW, that won't adversely affect your rights but, in USA, to have defined your contribution to the art relative to the closest art you had when drafting, and then face a USPTO Exr armed with yet closer art, that published after your search was conducted, that will hurt you, no?

So, the decision not to search, before going for a patent in USA, seems quite logical, no?