Although a prior art/patent search is not legally required prior to filing a patent application at the USPTO, it is the view of many patent attorneys that a professional patent search coupled with attorney review is an important component of the patent procurement process. This article discusses the primary benefits related to a professional patent search.
Professional Patent Search | Benefits and Process
Prior Art Snap Shot | Scope of Legal Protection
The primary benefit that a professional patent search provides an Inventor and their patent attorney is a more accurate picture of the prior art related to a subject invention. With this information, a patent attorney is better positioned to more properly advise the client regarding the likely level of patent protection that may be obtained.
If the patent attorney determines that patent protection may be available, an Applicant is able to make a more informed business decision upfront. More specifically, once the Applicant is apprised of the available scope of legal protection, they can determine whether this protection satisfies their business objectives prior to incurring substantial costs related to the patent procurement process.
It should be noted that an Applicant may choose to conduct their own search prior to contacting a patent attorney.
Patent Application Drafting | Patent Prosecution
A professional patent search will additionally aid a patent attorney in drafting all aspects of the patent application, including the most important part of the application, the patent claims.
As patent claim breadth is directly determined by the prior art, the patent attorney will be better positioned to draft patent claims of a more appropriate scope if they are aware of the prior art.
If a patent attorney drafts claims without knowledge of the prior art, the Applicant will likely incur additional costs during patent prosecution as it is likely that claim amendments will need to be furthered to traverse a patent examiner’s prior art rejections included in an office action. Additionally, it must be stressed that an Applicant wants to minimize having to amend the claims of a patent application during patent prosecution as such actions may adversely affect an Applicant’s available remedies if a resulting patent is later asserted.
Knowledge of the prior art will also help a patent attorney ensure that a sufficient amount of detail has been included in the specification of a patent application to “teach those skilled in the art how to make and use the full scope of the claimed invention without ‘undue experimentation’” and thereby satisfy the enablement requirement of 35 USC 112.
Professional Patent Search Process | Patentability Opinion
A patent attorney should coordinate the professional patent search with a third-party search company as the patent attorney is best positioned to analyze the search results. More specifically, a patent attorney is able to advise a client regarding the patentability of an invention in view of various patentability requirements related to prior art which must be satisfied to obtain a patent grant. For example, even if a single prior art reference does not explicitly describe the subject invention, patentability may be negated due to a combination of multiple prior art references (see link to IskraIP article above regarding Obviousness Rejections)
Once the search company has completed the patent search, the patent attorney will thereafter generate a patentability opinion. The patentability opinion usually memorializes the attorney’s analysis of the search results (prior art) against the subject invention to determine the level of patent protection which may be available.