To Search Or Not To Search

That is the (pretty simple) question.

Under U.S. patent law, there is a duty to disclose to the USPTO any prior art (including patents, publications, and other inventions) that is material to the patentability of your invention, but there is no affirmative duty to search for this prior art. As such, many large firms (and corporations) discourage inventors from conducting a patent search. Their theory is that the less you disclose to the USPTO, the more likely it is that your patent will issue. While this may be true, it does an inventor little good to get a patent by pretending that prior art doesn’t exist.

On the other hand, there are many good reasons to conduct a patent search.

  1. First, if the search reveals prior art that is exactly like your invention, then your business can save a lot of time and money by not filing a patent application or by not pursuing the invention at all.
  2. Second, in our experience, the USPTO will take your patent application more seriously if you disclose patent and non-patent prior art. We have seen applications that fail to disclose prior art (filed by large law firms) get the slow treatment at the USPTO.
  3. Third, a patent that discloses prior art typically ends up being a strong patent, because when the patent issues, the cover of the patent includes “References Cited,” and there is a presumption that the patent’s claims are patentable over these references.

For all of these reasons, Clock Tower Law Group recommends conducting a patent search, either formal or informal, for all patent applications.

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  1. Pingback: Patent Reform Turns Patent Attorneys Into Patent Pending Attorneys » Erik J. Heels

  2. Pingback: Drawing That Explains Patent Costs at Erik J. Heels

  3. Gideon says...

    “1. First, if the search reveals prior art that is exactly like your invention, then your business can save a lot of time and money by not filing a patent application or by not pursuing the invention at all.”

    Cost of decent prior art search – 2k.
    Cost of drafting average application – 5k.
    Total potential savings – 3k.
    If no savings total additional cost – 2k.
    Cost/benefit for those filing many applications – likely too costly to search for benefit provided.

    “2. Second, in our experience, the USPTO will take your patent application more seriously if you disclose patent and non-patent prior art.”

    This is absurd and absolutely unsupportable.

    “We have seen applications that fail to disclose prior art (filed by large law firms) get the slow treatment at the USPTO.”

    Again, I’d stake my practice on this being unprovable.

    “3. Third, a patent that discloses prior art typically ends up being a strong patent, because when the patent issues, the cover of the patent includes “References Cited,” and there is a presumption that the patent’s claims are patentable over these references.”

    If not directly addressed by the Examiner, the presumption is easily rebutted.

  4. Erik J. Heels says...

    Greetings Gideon,

    Not only do I think searching is wise (and failing to search is unwise), but I also feel that the patent rules should be changed to require searching.

    I’ll gladly link to an article providing another point of view. Until then, we can agree to disagree.

    Regards,
    Erik