For most inventors a patent search should be the first step in the patent application process. The reason is simple. A patent search is used to determine whether the time and expense of moving forward with a patent application is a worthwhile endeavor. The patent process can be expensive, so the last thing you want to do is spend a lot of time and money preparing and filing an application when there is easy to find prior art that will likely prevent a patent from issuing. Likewise, high quality patent searches can give you a good idea about the likely scope of any patent claim that you may be able to anticipate. If it looks like you will only get an extremely narrow claim it might not be in your best interest to invest in the patent application. You can then move on to your next invention, and inventors always have a next invention.
Still further, patent searches are excellent learning tools because they give you an opportunity to discover which aspects of your invention are most likely to contribute to patentability, thereby allowing the description in any filed patent application to focus on those aspects most likely to contribute to patentability. Without a patent search you would just be describing all the various aspects of your invention as if they are equally important, which we know won’t be the case.
For these and other reasons many inventors and businesses will frequently choose to begin the process by paying for some kind of patent search. Of course, careful review of the patent search report, any opinion or assessment provided by a patent attorney or patent agent and thoughtful consideration of the patents that are found is critical. Unfortunately, in my experience a lot of inventors only give a cursory review of the patents found, thereby missing a great opportunity to use the prior art found to focus in on what is most likely unique and patentable.
In a comment posted some time ago on an older post relating to the top 5 mistakes inventors make an attorney wrote:
Gene, I know this is an older post, but I couldn’t help but add a no. 6 to the list. This happens frequently and when patent counsel is on board, no less. A patent/novelty search is performed by a professional outside search company (at my insistence) and perhaps 50 or so “hits” of patent and non-patent prior art are cited in the search report. Although the report does not provide a detailed opinion as to patentability, the search professional states in the report or accompanying email that the first 6 or so cited references appear highly relevant to the disclosed invention. I forward the search report to the client, along with the necessary instructions and required disclaimers, and ask the client to review the search results and provide me with comments for discussion. Inevitably, the response in each case from the client is a simple two-word statement: “Nothing relevant.” That leads me to believe two things: 1) the inventor did not review the search report, or 2) the inventor is clueless. Given that in each case the inventor is highly knowledgeable, analytical, and understands the technology (whatever it may be) at a sophisticated level, I tend to think that it is the former – the inventor simply did not read the report, or only gave it a very cursory review, e.g., only the titles of the cited art were considered. Whatever the case, this is a huge mistake. I know it is tedious, but I need inventor/client input as to prior art for claim drafting strategies. I always encounter resistance as to this important, IMHO, step in the drafting process. Your thoughts? Does this happen to you?
This is a problem that I suspect virtually all patent attorneys experience. I do everything I can to work with inventors to get them to understand the need to focus on the patents located. I think most inventors read the patent search report, but an awful lot do not actually read the patents themselves. What I try and do to get inventors to focus on the patents that matter the most is to identify the few that are the most relevant and then engage in a discussion with them about those patents, steering them to focus on the parts that are closest and need to be distinguished. I find that if I ask inventors to focus on any more than 3 to 5 patents all they will do is look at the titles, perhaps look at the pictures, maybe read the Abstract. Inventors get overwhelmed. There is a lot to a patent, but the inventors who really take the time to read the key patents found in the search will be able to most meaningfully contribute to the decision about whether to move forward, and then ultimately to meaningfully contribute to the preparation of a patent application that describes the invention as completely as possible, covering a variety of nuances, alternative embodiments and detail that is critical.
The inventors that I work with are highly intelligent and motivated, and when you explain to them the process they seem to understand the task at hand. By and large most seem to be looking for guidance, so a step by step approach can be quite effective. The inventor has the knowledge of their own invention, and when they see something that looks similar they can be coaxed to provide critical information; namely that the reference is problematic or there is an aspect of the invention that perhaps has not heretofore been described with as much detail as possible. Through a collaborative approach I find I can work with inventors to identify the patents that are truly the closest and how those inventions are similar and how they are different. This is critical because the inventor is in the best position to identify the differences and the patent attorney is in the best position to determine whether those differences will likely contribute to patentability. To work properly there needs to be collaboration. See A Beginners Guide to Patents and the Patent Process.
Determining how the prior art is similar and how it is different is essential to being able to offer an opinion, and it also allows for the gathering of a great detail of information about the inventor’s invention, which will be extremely helpful if and when the inventor decides to move forward with a patent application. The amount of detail that can be put together makes writing a patent application a much smoother process, and invariably leads to a far more detailed written description of the invention. If no serious road blocks are found the patent search can and will normally lead to a better, stronger patent application. The reason a patent search leads to a better, strong patent application is because the first application filed is absolutely critical. All aspects of your invention must be disclosed, nothing new can be added without compromising the all important filing date (aka priority date). With a search the initial disclosure can be specifically written to carefully define and expand upon what is most likely the patentable feature or components.
A detailed omnibus disclosure of the invention in a patent application can form the foundation of an entire patent portfolio, but at least it will allow for the addition of claims during prosecution with the patent examiner. Yes, claims can be added to an application after filing. The prohibition is against adding new matter. Matter is not “new” if it was present at the time of filing. So it is critical to include the most detailed description possible. Everything from broad to narrow with discussion of as many different versions of the invention as possible. When this is done informed by the results of a competent, professional patent search and gone over with in a collaborative manner between inventor and patent attorney the results are an astonishingly well written patent application that will lead to a strong patent.
Not only do patent searches allow for focus to be placed on what is different and most likely patentable, but if knock-out prior art is found then the expensive a patent application has been saved. I always tell inventors that they are creative people, much in the same way an artist or song-writer is creative. In my experience, all creative people are creative by nature and that typically means future creativity. If you spend all your fund and strain your resources on the first invention you may be necessarily putting yourself in a position where you cannot move forward with what is next, and what is next might be even better. There is no way to know for sure, and taking risks on some level is necessary to succeed, but starting with a patent search leads to a better product and can help you cut and run, moving on to whatever is next if the likelihood of obtaining a patent is low, or the likely resulting rights would be too narrow to warrant the time and expense of a patent application.
Many times people will say that they have already conducted a patent search themselves and have found nothing, and/or they will say that they have never seen anything like it in the industry. These are all helpful, and such study should be undertaken by every inventor (see Patent Searching 101 for a tutorial on conducting your own patent search), but if you are not intimately familiar with searching techniques you are all but certainly not going to find what you are looking for in your own search. There is always going to be prior art for every invention. See There is no prior art for my invention. Of course that doesn’t mean you shouldn’t do your own patent search to start, it just means inventors need to be honest with themselves about the likely limits of their own ability to find the best prior art.
Almost every time I search I am searching for inventors who say they found nothing, and every time I find patents that were findable in the Patent Office database but not located by the inventor. Sometimes that patents are tangentially related, sometimes they are quite close and sometimes they are exactly (or nearly exactly) what the client has invented. In my career I have personally done several searches where the client said they looked and when I searched I found the exact invention already patented. But this is why you do the search. It is better to spend a modest amount of money on patent search now to learn about the prior patents. The nightmare scenario is you don’t do a patent search and spend thousands of dollars on the patent application only to learn later that no patent could be obtained. Having said this, doing your own search and learning whatever you can from the prior art makes all the sense in the world.
For more basic information on patents and invention please see:
- An Alternative to Claim Mirroring in Initial Patent Application Filing
- IP Goes Pop! You Can’t Do That – What IP Cannot Protect
- How to Use the USPTO Patent Public Search Tool
- Using Analytics to Assess the Effectiveness of Common Patent Prosecution Practices
- Tips from a Former Examiner on How to Conduct Interviews at the USPTO
- Ten Mistakes to Avoid When Drafting Information Disclosure Statements
- Defanging Descriptive Material Rejections
- Can You Refile a Provisional Patent Application?
- Ten Common Patent Claim Drafting Mistakes to Avoid
- It’s All in the Hardware: Overcoming 101 Rejections in Computer Networking Technology Classes
- Disclosure Requirements in Software Patents: Avoiding Indefiniteness
- Patent Procurement and Strategy for Business Success Part III: Prosecution – Wielding an Invisible Hand
- Patent Procurement and Strategy for Business Success Part II: Claims – Targeting the Right Infringers
- Patent Procurement and Strategy for Business Success: Building and Strategically Using Patents that Target the Right Infringers and Thwart Competitive Countermeasures
- Fit to Drive: Three Inspiring Office Action Responses from the USPTO’s Art Unit 3668
- Design Patents 101: Understanding Utility Patents’ Lesser-Known Cousin
- Two Key Steps to Overcome Rejections Received on PCT Drawings
- Errors in Issued Patents as a Measure of Patent Quality
- Intellectual Property for Startups: Building a Toolkit to Protect Your Products and Design
- Why the Patent Classification System Needs an Update
- Understanding What a Design Patent is Not
- Design Patents: Under Utilized and Overlooked
- Deciding Where to Obtain International Patent Rights
- When to Use the Patent Cooperation Treaty—and Why It’s So Popular
- Why and When Design Patents are Useful
- PCT Basics: Obtaining Patent Rights Around the World
- ipAwarenessAssessment: Inventors and Business Owners Should Start Their IP Journey with this USPTO-NIST Tool
- Successful After Final Petitions Can Help Advance Prosecution (Part V)
- From Agent to Examiner and Back Again: Practical Lessons Learned from Inside the USPTO
- WIPO’s INSPIRE Offers a New Way to Select Databases for Patent Searches Involving Machine Translations
- Understand Your Utility Patent Application Drawings
- Why It’s Time to Board the PCT Train: The Benefits of Filing U.S. Patent Applications via the PCT First
- Implications of Filing Subsequent Patent Applications in the United States (Part III)
- Types of Subsequent Patent Applications in the United States (Part II)
- Getting a Patent: The Devastating Consequences of Not Naming All Inventors
- Getting A Patent: Who Should be Named as An Inventor?
- Make Your Disclosures Meaningful: A Plea for Clarity in Patent Drafting
- Applying for a Patent in Germany
- Autopilot or Advocate? Raising the Bar in Ex Parte Appeals at the USPTO
- Time to ‘Think PCT’: Rethink Your Global Patent Strategy to Preserve Your Seat at the Table
- Patent Office Insights from Two Former Examiners
- Conventional Patent Wisdom Revisited
- Develop Your Database of Templates for Responding to Office Actions
- Background Pitfalls When Drafting a Patent Application
- Eight Tips to Get Your Patent Approved at the EPO
- Four Things C-Suite Executives Need to Know About Patents
- Starting the Patent Process on a Limited Budget
- What to Know About Drafting Patent Claims
- Beyond the Slice and Dice: Turning Your Idea into an Invention
- Mitigating ‘Justified Paranoia’ via Provisional Patent Applications
Join the Discussion
3 comments so far.
Andrea DavisAugust 28, 2017 04:35 pm
Thank you for bringing the importance of patent searches to the forefront! Maybe asking the patent search provider to tailor the patentability report to include actual excerpts that focus on the invention would help the inventors analyze the report and hone in on what’s important. As one of the professionals who perform this service, I have done just that and found that it helps tremendously.
Night WriterAugust 26, 2017 12:45 pm
What of the big story?
Tesia ThomasAugust 26, 2017 11:46 am
I like what Paul Cole says about drafting. Just use enough detail and cover every angle, feature, nook, and cranny and you can probably find something new in spite of a poor search.
A lot of people don’t describe their own invention for the sake of trying to get around prior art.
That was Windsurfer.
But also, let’s be real here, who knows what’s prior art until the claims are finalized? Drafting is an educated guess.
This is why disclosure forms don’t penalize you for missed prior art. Right?
They just say to give your word that you’re not willfully leaving something out.
And with AIA combination of prior art, the whole thing really gets murky.
Might as well cite every patent ever patented (from your category). Someone might in IPR…