Queries for Patently-O readers:
- Do you always conduct a prior art search before filing a new patent application? (why?)
- Are there certain technology areas that still need to be searched from the PTO search room?
- Are there certain technology areas where searches are more cost effective — either because the search is cheaper or because the search is more likely to discover the majority of close prior art?
- What are the best tools available to a searcher who is not on-site at the PTO?
- How much do you typically pay (or charge) for a professional search?
- How in-depth do you tend to read the resulting references?
- In our book, Patent Application Practice, Jim Hawes and I recommend a pre-filing search as a matter of course. However, we make clear that a cost effective search will certainly overlook unknown references. [Link]
- On his blog, IPO President Marc Adler strongly recommends pre-filing searches. [Link]
- Professional Searcher, Gary Odom gives four reasons for pre-filing searches:
- Draft around the art: “If you don’t know the prior art, you cannot possibly draft novel claims, know the appropriate claim scope, or reasonably hope that the drafted claims are valid.”
- Pro-actively explain the art: Using the discovered art either in the patent application or during a pre-action conference increases the odds that the examiner will grant the claims sooner.
- Clearance: Although not complete, a “quick prior art search” may reveal clearance issues or provide some assurance.
- Enforcement: Having the best prior art cited on the patent will strengthen the patent and lessen the potential for later re-examination.
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