A patent search is a search of patents, patent applications and other publicly available documents, in order to identify those documents closest to the ideas and concepts of your proposed invention. These documents that existed before the filing of your proposed patent application are termed “prior art.” In the patent search, the goal is to locate any and all prior art publications that are the same as or close to one’s proposed invention. Why conduct the search? To be patentable, an invention must be original and not invented by another or otherwise in the public domain. More precisely, to be patentable under U.S. law, the innovation must be novel in view of the prior art, and also not obvious in view of it as well.
Let’s step back. Note that in patent parlance, an invention really means a claimed invention, specifically the claims located at the end of the patent document and considered its intellectual property. Most of the time there are many claims, and so the term “invention” is referencing all of the claims of a particular patent.
Upon conducting the patent search, where the entire proposed invention is located in a single piece of prior art, the invention is said to lack novelty. On the other hand, more than one piece of prior is usually required to establish that the invention is obvious in view of the prior art; the Supreme Court’s test is whether the combination of familiar elements yields no more than predictable results.
During a patent search the goal is to locate any and all pieces of prior art whose written descriptions are close to or near the proposed claims of your patent application. These can also be claims that you are thinking of protecting in your hypothetical application but have yet to write down: your ideas.
How many pieces of prior art should be located during the patent search? This depends on your goals as the inventor. For patentability, to overcome the requirements of novelty and non-obviousness, you should locate at least any prior art references that are the same as or similar to your proposed invention. Broader searches may also be conducted to learn the patent landscape and achieve additional benefits.
In reality, anyone may conduct a patent search. Since expertise is preferred, in the typical case a patent lawyer, a patent agent or a skilled searcher conducts an exhaustive search of similar patents and patent applications to ensure that your idea is both novel and non-obvious. With more than 9 million patents having been issued in the United States, alone, the activity usually takes substantial time and effort.
But also remember that as mentioned prior art is not limited to patents, and there are times where it makes sense to conduct a more costly, extensive search of all publications (e.g., newspapers, magazines, books, research articles, books, white papers) and commercial activities (e.g., product sales) that are close to your ideas for patenting.
Of course as a first measure, you should get acquainted with the Unites States Patent and Trade Office’s (USPTO) searchable database. Though some complain of slow loading speeds, the site is by definition comprehensive of all US patents and applications. The site also comes equipped with the most advanced search tools. This fact can be extremely important when you’re wading through millions of patents. To refine searches to better discover similar patents to your proposed invention, read the fine print on the advanced search page. This information will be beneficial.
An excellent commercial alternative is Google Patents. The search engine is fast, and the information is extraordinarily comprehensive for a located patent or application. Google Patents allegedly casts an extremely wide net, covering patents way back to the very first US patent in 1790. (It was for a process to make potash.) However, Google makes no guarantees of a complete database, and users have complained that often publications cannot be located, particularly newer, published patent filings.
Another excellent choice database choice is Free Patents Online. The major advantage is its extremely comprehensive coverage. Patent practitioners use it often because any patent or application will very likely be located. The site also features extensive hyperlinks, so if you need to quickly jump to a related patent, Free Patents Online will help you search with speed. Another positive attribute is that the site provides those perusing with the authenticate PDF versions of filings, the same as Google Patents, except that unlike Google Patents the PDFs are images and not searchable.
The primary reason patent searches are conducted is to ensure that your invention is both novel and non-obvious in view of known publications or “prior art.”
The prudent inventor will wish to ensure that another inventor has not already filed a patent application on your inventive concept, and that the idea is not otherwise in the public domain, known as “prior art.”
If you find a patented invention nearly identical to your own, or sufficiently close to what you consider commercially important in your invention, you may consider halting the patenting process. This process of drafting and filing a patent application, its subsequent examination by the USPTO and your attorney’s responses, with the goal of ultimate allowance, is termed “patent prosecution.” Patent prosecution may take between months or years to accomplish, and may require substantial attorney and USPTO fees as well.
There are many other reasons why searching is helpful. For one, if your exact invention is not found in the search and you view this as a green light to move forward, understanding where your patent falls and how it is unique can be key to your patenting strategy. This information is also helpful to your product development.
For another, conducting a patent search facilitates understanding the patent landscape of your invention. In some fields like the semiconductor technologies, there are vast numbers of potentially overlapping patents, known as “patent thickets,” and seemingly minuscule variations may be patentable, whereas in others, there may be far fewer patents. This information itself is useful, both for patentability and potential future infringement by your patented product. Differing patentability standards, not by law or regulation but in the application to a field of technology, may also be noticeably applied by patent examiners in particular fields without documentation of it.
It is also very useful to understand the competition for your product, or potential product; while it is not necessary that a patent be productized, in many cases it is. Whether a major multinational corporation has inventions in your field may be a deterrence or alternatively a benefit depending on your marketing and technology strategy.
It is further helpful to see what typical patent applications in your inventive industry look like. The USPTO has certain standards for patentability that must be complied with and much time and effort may be saved by reviewing what content is apparently considered customary in other patents related to your field of technology. In fact, there is no novelty or non-obviousness requirement for the specification of the patent application (i.e., this is reserved for the claims), and drafting your application to include similar language may be helpful in flushing out your inventive background. This tactic can be an enormous time saver in the drafting of your patent application, whether by an attorney or agent, or by you drafting the application in your personal (pro se) capacity. Experienced practitioners often find that describing what existed before your invention, meaning what you are building on, comprises the vast majority of their work in patent drafting.
Since all documents in the public do/main are considered prior art, when conducting a patent search you should search all patents and publications, both U.S. and foreign documents.
Note that traditionally, unlike patents in other countries, U.S. patents were not published. That changed however when the American Inventors Protection Act of 1999 (AIPA) was passed.
Inventors in the US now have the choice of whether or not to allow their patent application to be published. (The patent application includes a technical description portion made up of an abstract, specification and figures, and also claims which are the actual intellectual property.) If he or she chooses to allow publication, the application will be published online and remain searchable in USPTO databases approximately 18 months after the initial filing. If, however, the inventor decides against application publishing, they forfeit the possibility of foreign filing of their patent application. Of course once the patent application is granted, it must be published, whether in the U.S. or any other jurisdiction.
As mentioned, there are many important reasons for conducting a patent search.
But, other than the costs, are there any reasons why you would not conduct a patent search?
Under 37 CFR § 1.56 and MPEP 2001, any individual associated with the filing and prosecution of a patent application has a duty of candor and good faith in dealing with the USPTO. This duty applies to disclosure of all information known to be material to patentability of the invention, including every claim.
In practice, the disclosure takes to form of submitting this “material” prior art for the application, along with a USPTO information disclosure statement (IDS) form. Submitted references are considered of-record for the patent prosecution history, and are listed on the face of the patent once it is issued. Note that the prior art references discovered in the patent examiner’s own search are also deemed of-record and are also listed on the face of the patent.
Since once located, prior art references resulting from a search will be deemed known to the inventor and others working on the patent application, the question arises: when is the prior art located in the search considered “material” to patentability of the claims?
Like most legal definitions, there is a precise test but it is very imprecise in its application, because of the wording of the regulation, the case law interpreting it and the particular factual circumstances may or may not be applicable. Here materiality means, informally speaking, whether the prior art (by itself or in combination) may establish a first impression (prima facie) case for unpatentability, or it tends to refute arguments made by the applicant during prosecution.
The failure to disclose such prior art references is considered a fraud on the Patent Office, and if established, can be used to invalidate the entire patent. The fraud is most commonly referred to as “inequitable conduct.” As one might imagine, when the patent-owning plaintiff sues the product-selling defendant for patent infringement, a powerful tool for the defendant’s arsenal is the establishment of inequitable conduct by the patent owner.
For this reason, it is important that from the search results those prior art references close to the invention be disclosed to the USPTO via IDS. But because the legal standard for what is “material” is difficult to ascertain and especially to predict, it behooves you to disclose any prior art that comes even close to your invention.
For this reason, despite all of the advantages of the patent search, it has this unique drawback.
This does not mean that defendants cannot use other avenues to establish inequitable conduct. Perhaps they can show that the patent owner came across the inventive idea in a different venue than the search and failed to disclose it.
Another perceived disadvantage is what prior art, submitted via IDS, is seen by the patent examiner before the application is allowed and issued as a patent. Many inventors worry that if they submit searched prior art references and the examiner considers particular prior art references to be close to their invention, the examiner will reject and never allow their application. This however is both short sited and reflective of a misunderstanding of the patent prosecution process. In fact the opposite is true.
First, consider that the patent prosecution process involves the examiner making rejections for lack of novelty and obviousness, and in response the applicant’s attorney or agent generally amend the claims to overcome the prior art. It is these amended claims that once allowed comprise the claims of the actual patent. Experienced practitioners should find a way to overcome the prior art via amendments and still capture the useful contributions of the inventor.
Secondly, it is simply wrong-headed to believe that references hidden from the examiner will not injure the enforceability of the patent. Two of the key defenses to an allegation of patent enforcement are (1) that the patent is invalid and therefore not enforceable, because it is not novel or non-obvious in view of the prior art, and (2) that there was inequitable conduct by the patent applicant before the USPTO. Suppose that the patent examiner misses good references and issues claims that would not overcome them; there is a real likelihood that during litigation, where the consequences are significant and expenses are not spared, the defendant’s attorneys and their searchers will locate the same references for their invalidity case. If through searching or otherwise the same references are known but not disclosed, the defendant’s counsel will seek to establish inequitable conduct as well.
On the contrary, there are real benefits to disclosing the references. The patent is considered to be prima facie novel and non-obvious over these prior art references, and the fact that the patent examiner saw the references and allowed the claims in any case is deemed very important to juries; the fact finder does not like to oppose the examiner’s findings, as they consider them knowledgeable, authoritative and neutral arbiters for the government. In fact, for this reason litigators representing patent-owning plaintiffs like to see many references cited on the front of the patent, to reduce the likelihood that patent invalidating references lie lurking in the prior art; they are also unlikely to make their invalidity case using prior art references that are of-record, since they had been deemed considered by the patent examiner.