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"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."


Bruce Berman



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."


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?

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