I frequently get questions about patent searches from independent inventors, and one of the most common questions relates to timing. They ask: “When should I do a patent search?” A reasonable question no doubt, but one that does not have a definitively correct answer that applies across the board in all circumstances.
When to get a patent search done is largely a matter of choice, but one that also depends upon the purpose of the search. Most frequently, inventors will seek a patent search once they have an invention that they think is worth patenting, but sometimes inventors won’t yet have an invention that is complete, but would like to get a sense of the patent landscape to determine whether it even makes sense to continue the project and whether there may be some available space that they could target.
These are two different purposes for a patent search, so the first step is to determine why it is that you want a patent search. If you are looking for a patent search that will give you an idea about the patent landscape and whether any available space (frequently called “white space”) exists then you will want to do the patent search early in the process. Of course, you yourself should do a patent search to inform yourself first, although there is real risk associated with only relying on a search performed by those who are not professional searchers. Still, doing your own search is free, except for the investment of time, so it is a logical place to start. We have a patent searching tutorial available to assist inventors in this preliminary first step.
Typically the search an inventor will inquire about is a patentability search to determine whether the invention they have come up with is one that likely can be patented. I generally suggest inventors start down the patent path by filing a provisional patent application. You can either do a search before the filing of a provisional patent application or after the filing of the provisional patent application but before the filing of the nonprovisional patent application. The cost of a patent search and patentability determination by a patent attorney can range from $1,000 to $3,000, depending upon the technology involved. To prepare and file a provisional patent the charge will typically range from $1,500 to $6,000, again depending upon the technology.
For inventors who find themselves toward the lower end of the provisional patent application range the cost of obtaining a patent search and attorney opinion will be comparable to the cost for preparing and filing the provisional patent application. In that case many will decide to file a provisional patent application to get the ball rolling and obtain “patent pending” status and then on the road to filing a nonprovisional patent a search will be done. For those inventors who will pay toward the higher end of the provisional patent application range, such as for a software related invention, the choice is frequently to do a search prior to filing even a provisional patent application.
The reason not everyone chooses to do a patent search first is because the cost of a search is not insignificant, even if it is less than the cost of preparing and filing a patent application. Additionally, a primary benefit of a provisional patent application is to record your invention and get an early filing date, so some will choose to file a provisional patent application as quickly as possible and not wait for the completion of a patent search. Still further, provisional patent applications are never examined by the Patent Office, so for this reason many will choose to simply skip the search at the provisional stage and then if they decide to move forward with a nonprovisional patent application do a patent search at that point.
So far I’ve described the typical decision by inventors, not the optimal decision. Doing a patent search first before any patent application is filed is always the best course to follow if funds are available. By doing a patent search and obtaining professional guidance from a patent attorney you will be able to determine whether it makes sense to move forward and what, if any, rights could be possibly obtained. In an ideal world everyone would start with a patent search, file a provisional patent application and then within 12 months file a nonprovisional patent application. By doing a patent search first you get to see what else can be located and from the earliest stages begin to explain your invention in a way that accentuates both the positive aspects of the invention and the important differences that exist over the prior art.
There is no doubt that doing a patent search prior to filing any patent application is the best approach. Of course, a lack of funding can necessitate different choices. For those who must cut corners the more you learn about the process and the law the more you will be able to help yourself. With this in mind please take a look at Invention to Patent 101, which is an information resource for inventors.
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7 comments so far.
AnonAugust 10, 2015 07:46 am
The first sentence should read:
This is not (and never has been) a question of the value of prior art searches.
As I have in the past made clear, this point about not even conducting any search is just a place where “best practices” does not dictate the legal requirement, and it is the legal requirement that controls whether of not any sense of “enhanced diligence” can reach malpractice levels.
The client can bold-faced say – SCREW any search and file this, and there is NO “malpractice” reachable to the advocate that does follow the client’s direction.
Quite clearly, this is not “best practice” by any means, And also quite clearly, this is not malpractice. As this extreme does not fall to malpractice, a lesser version cannot fall to malpractice**.
**Granted of course, my proviso is adhered to: that the advocate has informed the client so that the client’s decision (and I will stress again that this is the client’s decision and not any type of co-decision) is an informed one.
AnonAugust 9, 2015 10:18 am
You imputed incorrectly.
There is (and never has been) a question of the value of prior art searches. But you simply cannot then create a requirement where none in fact still exists. Congress has every power to write a law that would require a prior art search. No such law exists.
My point is not a debate about best practice – so your attempt ot move the point there is a fallacy. I have always stated that best practice is having the most diligent search that the client decides to have. And yes, this is very much a client controlled decision. Your writing also seems to obscure that fact. I do not see how you can disagree with me on that point. This is NOT a joint decision – this is purely a client decision upon my best efforts to inform that decision. Your attempt to paint this otherwise is clear error.
As to your paragraph on advocacy, your point is valid, but not germane to the underlying point under discussion.
The remark on providing risk is related to the notion of whose decision it is. It is my duty to inform. It is NOT my power to decide. Advocacy does not cross that line. You appear to not recognize the line that you are crossing with your desire to somehow make this a “joint decision.”
Andrea Walsh PhD JDAugust 9, 2015 03:20 am
I impute the statement “The requirement of no search of any kind” by factual evidence and not by IP vernacular used practitioners when it is useful for them. When the client need’s (ieno ) potentially lead to malpractice, one must consider the changes that have occurred in legal practice regarding malpractice due to negliglient searching and duty of candor.
FITF, the expanded definition of prior art, as well as the significance of prior art in obtaining quality patents , has lead to the realization that prior art searching has more more value than merely being a yardstick for patentability.
Bottomline, practitioners will accept the change or not and continue to waste endless hours justifying why not knowing art relevant to the validity of claim scope is unnecessary in the file record until the patent is granted.
Where I disagree with you, is it always the best practice is to offer the client the not always what she want but she legally needs and what is the most cost-effective option for her product based on its placement in the market, its competition, and other business concerns after explaining the expanded due diligence required under the AIA. My clients want and need guidance in this rapidly evolving world -and yes they range from multinational multi-billion corporations preeminent in multiple fields to startups to individual inventors. But we jointly decide on such strategic decisions otherwise what value would you provide?
Our ultimate responsibility to our clients is to anticipate and analyze prior art challenges and provide be prepared to quickly address any challenges that may come. To me this is advocacy.
I do not understand the remark of “imputing an incorrect level of providing risking risk picture and…. advocacy”.
AnonAugust 7, 2015 08:23 am
Sadly, you are quite mistaken to assume that your “not seeing any justification” means that there is NO justification.
Truth be told, along the spectrum of reasons of having patents is included the point of having even “schlock” type rubber-stamped patents that would never see the light of day in a courtroom.
This is simply business reality that stems from the Armageddon-style days of Large Corp to Large Corp cross-licencing and “quash anyone with a single patent that gets-in-our-way” US (neigh, World) business models.
Closing one’s eyes to this does not – and should not – make such considerations go away.
Your own assumptions then, are a flaw to your construct.
As to some of your other points, we are very much in agreement. Counseling small entities interested in the patent path should always include the full range of activities involved – including provisions for enforcement of any rights obtained.
Other points you share though are as equally flawed as what you choose not to see. Since there is NO requirement for a search of any kind, your imputation of an “inadequate” search has no bearing in law. The distinction that I would amend to your position then would be that counseling the client as to the effect of the range of money spent on any search may or may not augment a final product’s ability to be enforced. It is always best practice to obtain the best search possible as chosen by the client who has that ultimate authority and responsibility. I have had clients – some being in the very tops of their respective industries demand NO searches other than the ones they themselves control internally. You impute an incorrect level of “providing risk picture” in the manner of your advocacy here.
Andrea Walsh PhD JDAugust 5, 2015 09:04 pm
Depending on the reason the inventor wants to protect the potential invention, I discuss the various options available to her realistically based on the finances available.
If the inventor can not afford a reasonably price priced pre-filing search prior art for about $1000 for a worldwide patent and non-patent literature to determine patentability, there is certainly no reason to spend money filing a provisional application or having an attorney detemine patentability on unsuitable information. I see no justification for this.
Instead, I would discuss the pros and cons of Defensive Publishing, which work well for inventors not wishing foreign protection but want IP protection and priority. This would appear much more satisfactory than trying to establish a FITF date by a provisional, despite the one year grace period if the provisional is not completely vetted.
You have said here many do not search due to cost- however, I and many others agree that identication of all relevant prior art anywhere in the world to secure and enforce a defensible patent is one of the most compelling changes in the 21st century. You called me “ignorant” (when you replied to my comments made to your 101 Patent Search Tutorial), but I assist every kind of inventor from solo to major corporations and provide cost-effective advice at all times.
Attorneys must be counseling their clients that AIA requires enhanced diligence before filing due to changes in prior art. In fact malpractice actions have been based upon allegations of negligent searching and and cases have been filed and won against attorneys for inadequate searching which gave the client the false impression the technology was clear of patent risks by filing a provisional application.
Obsolete patent searches used for the last 60 years are not meeting the requirement of patent law in the 21st century under AIA ‘s requirements of 102 and 103. Patent owners unable to make claim amendmendts during IPRs, granted patents found invalid, due diligence that invalidated patents through comprehensive searchs, where is the cost savings there?
We obviously do not agree; so if you respond please do not assume you know who I worked for or their budgets.
Also, among professionals words such as ignorant from someone of your standing are completely unacceptable. I was nothing but polite to you in both of my comments and will accept nothing less from you, because you have “status” and I do not. Many people with status agree with me.
AnonAugust 2, 2015 09:17 am
I just wanted to let you know that I agree completely with your post here.
All too sadly though, I have had clients that have as their official policy the exact opposite direction. For fear of treble damages, clients have instituted policies that direct their employees to NOT review published patents at all.
I have had discussions with my congressional representatives about this effect, hoping to push a view that publication should be made to entail a de facto presumption of knowledge, but I am a realist and know that my view and my voice will not turn the tide on this issue. Never the less, I will continue to use my voice so that perhaps other voices will join mine, and one day our representatives will notice that corporate policies that are created that directly go against the mission of the Patent Office need to be recognized and actively legislated in a manner that the Office’s mission can overcome what amounts to purposeful ignorance.
BennyAugust 2, 2015 05:26 am
I would go further and suggest that patent searching is an ongoing and continuous part of R&D. By keeping an eye constantly open on the patent landscape, you will know when you are running towards a patent roadblock.