Should I do a patent search?

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.

4 thoughts on “Should I do a patent search?”

  1. 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

  2. “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.

  3. * Should I do a patent search? (2016-12-05)
    http://www.erikjheels.com/627.html

    10 years after writing this article, the answer to the above question still “yes” if your company is a small startup hanging its hat on one or two pieces if intellectual property. It is way better to spend a little money on a patent search – and discover that you should not file – than to spend much more on filing and patent only to discover the same thing years later.

    The economics for Fortune 1000 companies are quite different. $1000 per patent search times 1000 patent searches/year equals $1 million dollars, which is real money. Also if you are a big company, then you are more likely to be sued for patent infringement, including triple damages for patents you knew about (which you wouldn’t know about if you did not search). And most advice for new patent attorneys is written from the perspective of BigLaw and the Fortune 1000, not from the the perspective of entrepreneurs and startups.

Leave a Reply

Your email address will not be published. Required fields are marked *