Post authored by Genna S. Hibbs and Gouthami Vanam
The art of patent searching is one of the first things taught in law school about patent prosecution. For a long time, patent practitioners understood and held the opinion that a patent search was crucial to determining an invention’s patentability because a search report or patentability opinion letter reduced liability if an infringement issue surfaced later. It also determines whether drafting a patent application would be fruitless for a particular invention and helps skilled patent practitioners draft their applications around existing prior art. In theory, a patent search is virtually required.
However, in practice, some clients are not interested in patent searches. One reason is that searches are costly, and add to the existing expenses of patent prosecution, which individual inventors and small companies must carefully budget. Often, a client can afford a search or an application, but not both. If the inventor proceeds with only an application and it is knocked out by prior art, they only incurred one cost, not two.
Another point in favor of not doing a patent search is the inventor’s sophistication. Inventors are experts in the field of their invention and keep up with the most recent technology. They also conduct their own searches and find relevant prior art. As long as patent practitioners draft around the prior art the inventor found and they include the invention’s novel features, the patent application should have a few allowable claims.
Unlike a trademark search, a patent search is never fully complete, because only publicly available applications and patents can be found in a patent search. Applications are publicly published 18 months after filing. Otherwise, they remain secret. In some circumstances, patent attorneys will file a request for nonpublication, which means the patent application will not be available to the public. As a result, even seasoned practitioners may be unable to find relevant prior art.
In contrast, the Trademark Electronic Search System (“TESS”), has all information about a trademark application publicly available at the time of filing. The patent examiners at the USPTO also have access to the prized Examiner Automated Search Tool (“EAST”) and Web-based Examiner Search Tool (“WEST”). WEST is not currently available to the public, but EAST can be accessed by registered practitioners at physical terminals in select libraries across the United States, such as the Harold Washington Library in Chicago.
The USPTO strongly recommends that practitioners interested in using these search tools complete 11 hours of training prior to using these search tools. Further, to use these systems, the practitioners need to register at the Public Search Facilities and obtain a SMART card and ID badge. Because the number of locations is limited, EAST and WEST tools are not widely available to patent practitioners. Moreover, these tools are also inadequate when searching for foreign patents, because only the abstracts are available.
Avoiding patent searches also has the unintended benefit of giving an application an earlier priority date, which is crucial in the first to file system. Ultimately, there are both pros and cons of patent searches. But it is not the attorney’s decision to decide whether a search should be performed. All we can do is give clients the lay of the land and empower them to make an informed decision.
About the Authors:
Genna Hibbs is the principal attorney of the IP boutique, Hibbs Law, LLC. Genna has a background in Biology and Genetics, and industry experience in biotechnology, dietary supplements, food facilities, medical devices, retail and commercial services, and non-profits. Genna’s experience in entity formation, licensing transactions, IP prosecution and enforcement, regulatory compliance, and infringement litigation empowers her small business, entrepreneurial, and start up clients to achieve their dreams. Genna regularly presents on topics concerning IP and business law, and was recently recognized by the USPTO for her pro bono work with the Chicago-Kent Patent Hub. For full bio, visit: http://hibbslaw.com/about.html
Gouthami Vanam is an associate attorney of the IP boutique, Hibbs Law, LLC. Gouthami has a background in Chemistry and Business Management. She has industry experience in IP prosecution, dietary supplements, FDA, FTC, and EPA compliance, business formation, municipal law, and telecommunications law. She is currently studying for the Patent bar and cannot wait to dive into patent prosecution. For full bio, visit: http://hibbslaw.com/about.html