Patent Prior Art Search
Prior art is simply a lawyer’s fancy way of saying something is already known. This is why the United States Patent and Trademark (USPTO) examiner will look to the prior art before they decide whether or not your invention is patentable. For example, if the prior art discloses your idea completely, then the examiner will determine that your invention is not new and issue a rejection on those grounds. But maybe the examiner concludes that the idea is only partially disclosed by the prior art. In this case the invention is technically new, but if the examiner decides that the prior art makes your idea obvious they may reject the invention on those grounds.
And prior art can come from virtually any public source. There are even legends within our industry of obscure academic papers from remote corners of the world being used as prior art against some patent applications. This is why it is important for your lawyer to perform a prior art search before the application is even drafted. You wouldn’t walk into a minefield without at least looking for the mines would you? The point is, in the vast field of human innovation, the prior art are the mines in the field, and a prior art search is how you try and identify them. It is unrealistic to expect that you will find them all, but simply by the effort, your attorney should have a general lay of the land and navigate the safest pathway forward by drafting a patent application that considers the obstacles.
There are other types of prior art searches that are worth mentioning here, even if we don’t go into too much detail. One type is often called a freedom to operate analysis, meaning, we are looking through the prior art not for the purpose of identifying whether or not you can patent your idea, but to verify if anyone else owns a concept and could stop you from selling your product or service in the marketplace. Likewise, we can also perform an infringement analysis, where we hyperfocus on a specific patent or family of patents to determine the exact scope of what those patents can or cannot protect. We do this defensively as a more focused freedom to operate analysis, and offensively as a way to identify the limit of your current patents. Lastly, we can also perform what is a called a claim validation report, which is basically a prior art search focused on invalidating the claims of another’s patent. This is a common option for our clients who have received a cease and desist or demand letter that cites a competitor’s patent claims. All of these searches are similar in concept to the more traditional patentability prior art searches, so we won’t address them here.
Specifically with regards to the patentability prior art searches, the important thing to consider is that no matter how good and how many times you do your search, the examiner will always find something you missed. It is simply what they do. Most of the time the prior art cited is not particularly relevant and sometimes it is spot on. But by preparing your application after first performing the prior art search your attorney should be generally prepared to deal with all of this as it comes. This is another reason you should let the attorney drafting the application perform the search as well.
A patent prior art search can also be pretty complicated. A proper search usually involves breaking the inventor’s idea down into core elements, categorizing those elements, and then looking through the USPTO patent database for various combinations and applications of those key elements. This will usually result in hundreds and sometimes thousands of results in the database, whereas even the most narrow searches will often produce dozens of results. And even after all of that, the results, which are generally written by lawyers and for lawyers in the most awkward English you can imagine, must be reviewed and compared against the inventor’s idea to determine how much, if any of the inventor’s idea is disclosed or contemplated by the prior art results reviewed.
And all of the above is only really addressing which prior art results are actually reviewed. Just a minor tweak to the element categorizations within the search or the use of synonymous terms to the inventor’s idea will generally produce different results which, again, is why the examiner will often find prior art that is slightly different than the lawyer who performed the search. But again, if the legal team performing the search is the same legal team drafting the application, then you are usually in a good spot to overcome any anticipation or obviousness rejections that the examiner throws your way. Also, when you use the same legal team for both the patent prior art search and the patent application, it is very common for law firms, including ours, to bundle their rates and you save money.
One consideration that you will probably want to consider is whether to pay for such a search separately from your patent application, or to do it all at once. As a general rule, no patent lawyer should be drafting your patent application without either performing a prior art search or reviewing another lawyer’s search results. So it usually just makes sense to do them together, especially if you’ve already performed your own quick and dirty search for the idea online and came up empty. But sometimes you just aren’t very confident that the idea is unique and before committing yourself to the added expense of the patent application process, you are willing to just pay for the search and get the opinion.
We can’t speak for all firms, but we can accommodate either approach to our clients’ preferences. If, for example, you hire us to draft a patent application, the first thing we do is the patent search. If that search comes up particularly crowded or reveals significant red flags that would fundamentally alter the scope of what you are trying to accomplish, we will discuss those results with you before proceeding. If, in this scenario you asked for a refund and we had not already begun performing additional work, you basically get a free search from us. If, however, you hire us to perform the search separately before commiting to the patent, we will do so but there can be no refund, even if you don’t like the results, because the results are what you paid for.
Essentially, if you need for any reason to determine the patent ability of your idea, your freedom to put that idea into the marketplace, or the limitations imposed upon you by others, feel free to call our firm for a free consultation to discuss whether a prior art search or analysis is right for you.