• Should I Conduct My Own Prior Art Search?
  • June 9, 2016 | Author: Andrew S. Rapacke
  • Law Firm: The Rapacke Law Group - Orlando Office
  • Before any applicant seeking patent protection files an application with the USPTO, it's important to conduct a diligent prior art search.

    A prior art search, also known as a patentability search involves examining prior art from around the world and identifying issued patents, published patent applications, and other relevant published documents that can affect an applicant’s ability to obtain meaningful patent protection. A thorough prior art search may even include examining prior sales and technology history related to a specific invention.

    Although completing a prior art search is not required before filing a patent application with the USPTO (United States Patent and Trademark Office), but results from a search often provide a patent agent or attorney with invaluable insight regarding the field, background, and history of the invention. This insight may lead to stronger claim language, which in-turn leads to a more efficient prosecution of the application. Moreover, conducting a search is a cost-effective tool that may save an applicant a considerable amount of time and money if the results show the invention would not satisfy the novelty or obviousness requirements of 35 U.S.C. § 102 and §103 respectively. Lastly, a prior art search may limit third-party challenges by disclosing during prosecution, any relevant art discovered.

    Within a patent application, any relevant art found during a prior art search is required to be disclosed in the application to the patent examiner at the USPTO. Further, the applicant has good faith obligation to prosecute their application with candor and honesty.[1] Generally, all art discovered from a search is likely to be considered relevant. More importantly, it is highly recommended to disclose any prior art search results as a cautionary measure to satisfy this duty to disclose.

    Those individuals subject to the duty disclose include each inventor, any pro se applicant, attorney, agent, or foreign agent involved in preparing and/or prosecuting the application. The specific language of the Manual of Patent Examining Procedures (“MPEP) states “any person substantively involved in the preparation and prosecution of the application and who is associated with the inventor, with the assignee, or with anyone to whom there is an obligation to assign the application.” [2]

    Although these potential benefits associated with a prior art search may seem obvious, this duty to disclose may cause applicants to re-think whether to perform a prior art search before submitting an application to the USPTO. A word of caution Before you go scrap the idea of a prior art search, remember: courts have upheld stiff penalties including rendering patents unenforceable when it is discovered that an individual associated with the preparation and prosecution acted out of bad faith with an intent to mislead or deliberately avoid a prior art search.[3]

    The Do-It-Yourself Search Advantages

    The duty to disclose can often make the decision of who should perform the prior art search a difficult decision. However, there are benefits for the inventor to perform their own search. For example, most inventors are experts in the field in which they are seeking a patent and are in the best position to understand the technology and the minute differences in the invention being searched. In addition, the inventor, as subject matter expert is more likely to understand the technical materials, and which publications are best to search when looking for relevant art. As such, some inventors feel that they are best suited to conduct a prior art search.

    The Do-It-Yourself Search Disadvantages

    As the subject matter expert in the field in which they are seeking a patent, inventors may be influenced or hold unbiased views when conducting a prior art search. For example, if an inventor comes across information during their prior art search which may influence future research and development. This bias and may lead the inventors to derive comparable art, or even copy similar designs from competitors which may open the door to future law suits. In addition, an inventor who learns of similar patented technology developed by a competitor may simply design around the technology. Although done in good faith, a lack of legal training may result in undesired design-around strategies creating unneeded changes that may not be patentable. Lastly, an inventor may not have a full grasp of the duty to disclose and may not meet the strict requirements of 37 C.F.R. § 1.56. The most common error remains when the inventors discovers relevant prior art, but does not disclose it because they do not feel its “close enough” to their invention. Conversely, the inventor may not conduct a thorough enough search due to lack of experience and thus not have the requisite training to determine what is “close enough.” The most beneficial aspect of employing a profession is that they remain impartial and provide objective judgment as to the relevance of known art.

    Third-Party Searchers

    An applicant may prefer to have a patent professional perform the search, this way the duty to disclose is easier to follow, and any bias or risks of notice may be eliminated. In-House attorneys, as managers of their respective companies and corporation may use prior art searches as a method of tracking relevant art of major competitors and manage their respective corporations portfolio based on the discovered art. At the same time a patent agent or attorney, registered to practice before the USPTO is more likely than the inventor to understand USPTO guidelines and disclosure requirements.

    A patent search firm brings experience, skill, and often a robust specialized search database that may discover prior art from around the world that an applicant may not otherwise discover. In addition, searchers in a search firm often have specialized training in particular fields of an invention and understand the unique search terms that describe the desired invention to prevent missing any relevant art. The search firm may then send those results directly to the draftsman or other designated parties, stream-lining the application process. The major drawback of hiring an outside professional or search firm is the additional costs, and in very rare instances, the failure to confuse or not fully identify the novel aspects of the desired invention.

    Admittedly no one may understand the nuances of the invention like the inventor. However, professionals are better equipped with robust databases to conduct a comprehensive search and full understand the disclosure requirements of 37 C.F.R. § 1.56.

    Interested in your thoughts, please share!


    [1] 37 C.F.R. § 1.56 (a).

    [2] MPEP § 2001.01.

    [3] See Digital Control Inc. v. Charles Mach. Works, 437 F.3d 1309, 1313 (Fed. Cir. 2006).