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?
Notes:
- 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.
Please leave your comment below:
I know this thread is long dead. Just wanted to clear my name on here since I may be referencing this page in a paper I put together (for a very small audience). TomD didn’t say those things listed in the previous post, it was Gideon. The poster’s name comes after the post, not before it. I am also a former examiner, so I know how it can be at the PTO. I actually think the PTO should require searches (at least for large entities). Surely there is SOMETHING out there a patent applicant is aware of. If not, a statement alleging a Pioneer Patent (new field of invention) should be required, and reviewed by the examiner to agree or disagree with the statement. Anyway, please replace “TomD” with –Gideon– in the above post. I have never said “Lordy Lord” in my whole life. 😉
This isn’t meant as a flame, just also my opinions from my days as an examiner and observations from them.
TomD wrote: “Also, IDSs are becoming worthless.”
The main reason for that is that, from my experirence examining over 2,000 patent applications, most IDS were drafted to be worthless. If they are worthless before an Examiner looks at them, they will be worthless whether or not an Examiner takes a more detailed look at the references therein.
Tom D wrote:
“We are now at the point where Examination at the PTO is so shabby that art cited in IDSs that is not considered directly by the Examiner is virtually indistinguishable from art not in the IDS and not considered by the Examiner.”
Examination is so shabby for a number of reasons. The biggest is that Examiners do not get enough time to search for good art. The reason for that is that the amount of hours given to each Examiner, in each of their respective art units and classes to search for prior art, has not changed since the current hours to search for each class were approved by Congress in the 1970s. Most technology from that era either is completely outdated or replaced at this point. The USPTO upper management says that automated search tools help supplement these archaic time requirements each Examiner must follow. If you believe that, I’ve got some ocean front property in Arizona to sell you. Furthermore, there has been a huge tendency within the last decade to take more and more time away from Examiners for doing the small tasks that take their attention away from searching. Customer service? You want to call and try to bluff the Examiner into allowing your client’s claims that you have already received a final rejection on? Guess what, the Examiner isn’t getting time to sit there and listen to you BS him/her on the phone for an hour. Take out an hour from the search.
Tom D wrote:
“Examiners reading entire Specs!
Lordy Lord, what will be next?
Lawyers with unpadded hours?”
Applicants and their representatives who tell the truth? And try not to hide a claim killing reference on a 20 page IDS that comes in a moving box? Congress updating the hours given per search to reflect on the current century and level of art needed to do a thorough search? Examiners managers actually coming from within their ranks and respective technologies, rather than from a completely different area of the USPTO, so that they understand what they are reviewing? We can only dream.
I think this makes a prior art search much more important. If you are a patent agent/attorney, and you know for a fact that examiners don’t get enough time to search for the best art that is related to your claims, because of that they aren’t going to read your spec. in detail or probably even consider more than 5-10 references on your IDS in detail, wouldn’t you get a respectable 3rd party/yourself who doesn’t have the constraints of Congress and the Federal Executive Branch system style of management? If I were trying to corner the market on my invention and make some potential dinero, I certainly would.
Will your clients pay for prior art searches? Quite a few of mine won’t. Not to mention paranoia about becoming aware of prior art patents that may be infringed. If I do get permission to do prior art searching, it tends to be a literature based search.
I’m surprised to see a lot of people claiming that “novelty” searches extend only to patent literature. When I do a novelty search for a client, I look at US and Euro issued patents as well as British, French, German, Euro, Japanese, PCT, and US applications. I also use both free internet searching and commercial abstract databases to search NPL. This does not require much more time than a patents-only search, and often turns up interesting bg info (though I would agree that more than 80% of the world’s technical knowledge is printed in some patent document somewhere).
prior art searches help in reducing (i) comments from examiner, (ii) overall costs of prosecution, (iii) chances of re-examination at later stages, (iv) and help in effective protection of invention.
If you want to make sure that you are NOT re-inventing the wheel, please conduct a good prior art search.
Do you always conduct a prior art search before filing a new patent application?
No one seems to address the issue of the in-house attorney dealing with an employed inventor at the same company. I know companies that explicitly prohibit any searches since they feel patent searches will expose the company to the treble damages levied in a successful subsequent infringement suit. Strikes me as the “plaudsible deniability” defense.
What are the best tools available to a searcher who is not on-site at the PTO?
As a wireless IP forensics specialist, I generally use the professional society archives (IEEE, ACM, etc.). I also use the PTO search pages, Delphion, FreePatentsOnline, IP.com, and others.
I am a patent attorney thinking of opening my own practice but holding back because of worries of liability. I would like to draft applications and prosecute them as “a reasonable patent attorney” would, but if I look for consensus on any issue that troubles me, all I get is a great division amongst experienced professionals.
What does a reasonable patent attorney do in a time when every aspect of patent law is up in the air, being challenged in court? We are still bound by the law as is, but we would be stupid not to change our practice to reflect the changing court opinion. i.e., section 103 – the obviousness debate comes to mind.
I often think back to the case of the patent attorney who drafted the software case but did not include the source code,(which was customary at the time and probably today too), only to be sued by his client after the patent was invalidated in court for failure to include the source code. I feel for that attorney, and wonder if his errors and omissions insurance carrier will drop him if the client prevails? I remember the comments about this case, where most attorneys who drafted software cases agreed that it was and is customary not to include source code. But a court can decided otherwise – stateting that code is required in software cases – and put all these “reasonable attorneys” at risk of being sued by their clients for failure to include source code.
But these attorneys acted “reasonably” at the time and some would argue that it would be unreasonable, for other reasons, to include the software. So you could be a reasonable attorney, following the practice recommended and followed by your piers, backing your practice by common sense and valid interpretation of patent law, only to find out that a judge, a decade later, with hindsight or with an eye for the public interest rather than the client, decides that a case should include the source code. I think that this is not for a judge to retroactively decide, but for the PTO to determine, and attorneys must be advised of this by the MPEP.
Which brings me to my question. What does the reasonable patent attorney do? There is support it seems for searching and for not searching; for including a history in the background and for not including a history in the background; for a patent is really all about the claims, and a patent is a document not just for the Examiner, but for licensing and business. To clarify my question I quote the son of the Rabbi from the Fiddler on the Roof, “He is right and he is also right, they cannot both be right!” Or can they?
I recommend a Restatement on Patent law which will guide us through this murky period and protect our clients better. Which brings me to another question: if I follow Chisum am I “reasonable?” I guess there is nothing stopping the court from disagreeing with Chisum.
Help!
Steve Wrote: “While it is simplistic to say this, but a patent is more than just the claims.”
I disagree.
A patent is only the claims, and every other word exists only to support the claims.
Oops on the typo. Sorry.
Write a spec that supports the claims?
Could that be write a spec that will support the allowance of the claims and/or show the value of the claims?
While it is simplistic to say this, but a patent is more than just the claims.
Finally, I agree that the patent system may be in the stinker. But it is my chosen career and I have to do my part the best I can. There are too many factors that are not under my control. At least I can do my part correctly.
Tom Barniak – You’re dead on. The thing that bugs me the most about the patent system today is that it is a total shaft job for the small operations and solo inventors.
90% or more of patents that issue to sole-inventors who don’t use an Agent or Attorney can be shot down like a one winged duck that cousin Buck throws in the air. Bang.
The costs are already outrageous. Money is siphoned off of the PTO receipts and thrown into the general fund, which means that every patent applicant is, which his or her fees, funding a portion of all general fed expenditures, like Iraq and corn subsidies.
The biggest shaft might be to the smaller company that is over the large entity limit but that only files a few apps a year. Figure 250k to go worldwide and you see quickly how Patents are a game for the Big Guys.
Throw in that the Supreme Court has now, essentially, instituted mandatory licensing of small guy patents to big guy corporations, and what you have is a system that is, IMO, fully stacked against the little guy. God forbid you invent the next great microchip architecture because, 1. you can’t afford to get the patent, and 2. if you get it, one of the bigs will just make it and then call you a “patent troll” when you try to enforce it, which will result in a mandatory license that will reduce the value of your invention by about 90%.
It stinks, and it’s only going to get worse. Next will be the SC decision about 103, where the ability to get a patent over close art will be significantly reduced (IMO).
Ayyyyy.
To the Examiner who wrote, “It becomes a colossal pain when attys. submit hundreds of references; the unwritten message there is that there is 102(b) art buried somewhere.”
I’d like to have you for my Examiner, and I agree with you 100%. It should be 10 or 20 references for free, and a stiff fee for every one thereafter. If there really are 100 references that are potentially relevant to your invention, then you don’t have an invention. In addition, there is already the concept of “cummulative”, which means that it is a valid defense to new art to say that the new art teaches the same thing as the art on record and is therefore no relevant to the claims.
Steve wrote:” I don’t care if the examiner reads the spec, the story is for everyone, e.g., business folks, juries, etc.”
I refuse to write patent apps that do anything other than support the claims. If I get the “it’s gotta read well for the business folk” line, I farm the work out. I tell all my clients – I write applications that support claims, not applications that massage some foolish PhD’s ego or that support some stupid manager’s marketing goals. If you don’t like that, go to Gus down the street – he’ll file any old crap if you pay him up front.
Steve also wrote:
“Let’s say a rejection is still made under prior art I described in the patent. I would prefer to be able to point back to the spec for why the invention is not patentable and not have to rely on mere self-serving attorney argument.”
Well Steve, I know you didn’t mean to do it, but you have perfectly summed up the error in you position.
Here’s a follow up-just heard it today actually. A guy in my beautiful county is busted in his car with 3 lbs. of coke(powder)-guys in a lot of trouble,right-not really,in the courtroom on his arraignment day he hands his attorney( by the way, very well thought of and known) a paper bag-attorney,procecuter go behind the wall to the chambers-seems there’s in the neighborhood of 70-80 grand in the bag. A few minutes later the dude’s attorney sticks his head around the wall leading to the chamber”G’wan-get out of here-there’s a problem” Yeah, the problem was probably that the amount wasn’t totally divisable by three. Absolutely a true story- dude is on the streets today-he was certainly pissed that it cost him every dime of his ‘working capital’-never was even charged even though every cop in the county was in on the bust- its enough to warm the cockles of any attorneys heart-you guys are in the wrong business. With a story like that, imagine what the spec. of my patent must be like- I’ve certainly learned a lot by monitoring this site- I’m sort of wary of what a patent really is- it might not be jack shit.
Conduct a Pre-x search? Invariably, unless it happens in rare instances where the inventor IS the prior art, so to speak.
As for writing a good story, it will likely be ignored by an examiner. However, I still believe it is a good practice for the reason that at some point in the future a court may need to read the patent. It is a good opportunity to start educating those without a technical background.
I don’t get it-after reading that many examiners don’t even look at the spec. tells me that maybe the whole system might be flawed-I assumed one caught the gist of the patent through the spec. leading up to the grand finally-the claims.One poster probably has it right- the whole thing is a big game for attorneys to get down and dirty- too bad for us guys who actually believe we have something if we get a patent-all it is is really cannon fodder for a smartass highly-paid attorney to negate for someone else.Not supposed to be that way.
I don’t care if the examiner reads the spec, the story is for everyone, e.g., business folks, juries, etc.
Let’s say a rejection is still made under prior art I described in the patent.
I would prefer to be able to point back to the spec for why the invention is not patentable and not have to rely on mere self-serving attorney argument.
When I was an examiner, this was a very signficant difference in credibility.
I nearly always encourage my clients to do a prior art search. The cost is much lower than the drafting and very often turns up prior art that precludes continuing. In response to one commentor: the inventor often does not know what his invention is; precisely because he does not know all the prior art.
I tend to write short backgrounds but agree with some of the commentors that it can be advantageous to summarize prior art in a way that helps point out its shortcomings relative to the present invention; and a search does help “claiming around”. It can be very difficult to amend claims during prosecution to emphasize a feature that was not well described because one didn’t know which feature would turn out to be inventive. To the commenter who said a search was a waste of $2k, first of all $2k is much more than I charge; and, I believe that the search usually saves costs during prosecution.
Assorted ramblings follow…
Gideon is right, we simply don’t read the specs. Yeah, I glance through them, try to get definitions of key terms claimed (for example is a “bridging compound” explicitly defined in the spec? If not, what is the breadth of that? Does my art apply?).
Further, I read the examples (not the prophetic BS where your drug does everything from grow hair to cure cancer while waxing the floor) to see what is actually enabled. Finally, I sometimes look at the background as practioners tend to put good anticipatory references there.
As the patent is granted on the *claims* that’s what I spend most of my time on. The specifications often run (in my art) to 100+ pages, a lot of which is garbage for the purposes of examination (although I understand the need to put almost all that stuff in there, to cover yourself for new matter, to carve around the art, etc.). So Gideon is right, I pretty much never read the descriptions of exactly how your invention is different from the prior art. Remember that examiners are on a time-based production system; we simply don’t have the luxury of reading the whole thing.
With respect to art cited in the spec. vs. on the face of the patent, my understanding is that if art is cited on the face of the patent (either by applicant or examiner) the issued claims are considered patentable *over* that art. My understanding is that if it’s not on the face of the patent it hasn’t been considered, and thus can be the basis of overturning the patent on re-exam, in court, etc. However I am not an atty. so please correct me if I’m wrong.
We take IDSs very seriously, esp. in cases going to allowance, because we understand that signing off on one indicates the claims are patentable over every reference. It becomes a colossal pain when attys. submit hundreds of references; the unwritten message there is that there is 102(b) art buried somewhere.
A search by a reputable search firm is a good idea, but it is hard to sell clients on this. To them it is often seen as merely additional expense.
The best resource for searching US patents is undoubtedly the system in the PTO search room. Nothing else even comes close. However, on foreign patents it is only fairly good rather than excellent, and it has no coverage whatsoever of non-patent literature (aka NPL).
To what extent NPL is important does vary tremendously with the art, and searching it is relatively more costly than searching patents.
Typically, you can get a fairly good novelty search of patents (no NPL) done for $500-600, whereas someone doing a search to invalidate a patent will charge from $2,000 upwards for a more thorough search and will include NPL.
If you think that most of the art will be NPL, then it may well not be cost effective to have a search done before filing.
As for Background Art section, it’s not the length that will kill you, but the inadvertent inclusion therein of things that shouldn’t be there! Anything that is a part of the invention should never appear there, but should be somewhere else in the spec, no matter how much that messes up the storytelling aspect. But then of course I’m only a ‘young pup’! (I’ll be 50 this year)
Who would ever put a reference in the background without also putting it in the IDS also?
Also, I agree with Gideon that examiners don’t read the spec. I’ve had several office actions where the examiner clearly had no idea what the patent was about, even though it is explained in the detailed description. They get one day to examine an application, they’re not going to waste time reading the spec when they could be searching for prior art.
The following is all IMO (in my opinion), so please treat it as such.
I can’t believe how much bad advice is contained in the posts I have read in this thread.
As a preliminary matter, it’s been my experience that Examiners don’t read specs. 90% of the rejections I get are simply rejections where the Examiner reads the claims and then does a search to try to find art that anticipates the claims. That’s it. Many times the art cited demonstrates clearly that the Examiner has not read the Spec, for example when a claim term is clearly defined in the Spec in a certain way and the Examiner’s rejection interprets the claim term in a far different manner.
It’s a wonderful illusion to think that Examiners read the entire Application to find out what “is different and better” about the claimed invention. Unfortunately, most don’t, and, further, it’s legally irrelevant. That is, the standard for patentability is not WHY your thing is better, as some above have suggested. All that matters is whether it is novel, nonobvious, and so on. So don’t get baited into thinking that telling a story changes the legal analysis – while it may be a device that can be used to get unsophisticated Examiners to allow claims they otherwise would not have allowed, the downside is greater.
My experience has been that there is a small core group of Examiners who know what’s going on and do a great job. Maybe 15-20%. Then there’s 60% who muddle along, throwing out the right words, but who don’t know the difference between Enablement and Written Description. Then there’s 20% or so left who are entirely clueless.
For those who believe it’s a good idea to “tell a story” in the Background or “discuss art”, all I can say is that must never have had a nonsense rejection that is based on “admissions in the BG section”. When you get the rejection that reads, “Claims 1-20 are rejected under 35 USC 103 over Jameson (US Patent 5,555,555) in view of your BG, which admits . . . “, and it’s a poor interpretation of what you wrote in the BG, then you’ll regret being Hans Christian Anderson. Your response, instead of being a concise argument directed against a piece of art, such as a patent, becomes a tangled mess that vainly attempts to argue that the misconstrued BG art is NOT proper prior art.
As for “telling a story” for the benefit of the Examiner, as I noted above, that’s a fools quest, in most cases, and all that story will ever do is provide ammo for Examiner’s, Judges, and Juries to shoot down your claims.
Also, IDSs are becoming worthless. We are now at the point where Examination at the PTO is so shabby that art cited in IDSs that is not considered directly by the Examiner is virtually indistinguishable from art not in the IDS and not considered by the Examiner. That is, I’d be equally comfortable filing a Reexam request or a DJ action based on a 103 for art in an IDS (not directly considered) or art that me or a client has found that is not listed on a patent in the References Cited section.
I have now even seen cases where directly considered art is being treated as reviewable!
Finally, to the young pups on this board, the inexperienced, and the in-house who prosecute only the occassional application, it is my opinion that what we do is much more of a game than an art. Art implies that we craft something and then present it to the world. We don’t. We roll up our sleeves and get dirty with Examiners as capricious, variable, and unreliable as the weather in Chicago. That is not art, unless you consider rolling around on a giant canvas in a pool of mud art.
Virtually everybody with significant experience (100+ applications drafted and prosecuted) will tell you that the PTO and the whole patent application process is a train wreck. If you want to negotiate your way through all of the garbage and nonsense, then put away your brushes and palette – artists will end up eating paint. Instead, put on your headgear and cleats and get ready to game the system – because the entire process is a giant, barely coherent game that rewards the obscene and punishes the clarion.
Examiners reading entire Specs!
Lordy Lord, what will be next?
Lawyers with unpadded hours?
I think a search is always good because it:
– can help avoid prosecution history estoppel if the claims are drafted around the prior art from the get-go
– fleshes out the ideas, makes connections with other technologies that may not have been apparent before
– can save a lot of money if the inventor does not have to file, and send them back to the drawing board for a better invention (some might say this is the essence of patent law – “to ensure the progress of science and the useful arts”)
I prefer to search at the PTO search room for everything I can because I feel that it is the best search program available (of the 10 or so I have tried), but it really shines with picture flipping to find mechanical structures. There is no other program that can flip through images and patents the way that EAST can. Goes as fast as you can press a key on the number-pad.
The next-best tool I have come across for mechanical devices is PatBase. It posts a picture for each result, 50 (or more) of which can show up on a single page. It is linked up to the USPTO and EPO websites to provide mosaics of all the images and original documents, and has some strong analysis tools. Also, it bunches the patents by family so you don’t have to look at the same pictures over and over again throughout the search.
I’ve heard of search rates between $60-125 per hour. Patentability searches can run from 5-15 hours, clearance searches from 15-30 hours, validity searches can be 15-50 or more depending on how badly one wants to invalidate the patent. Not cheap, but not much is in the patent world.
no.way@uspto wrote:
“wrong. If it’s not on the IDS, I don’t consider it. If it’s in the spec. and anticipates/renders obvious your invention I will probably cite it against you.
Bottom line: art in the spec. can be a useful place to start a search, but failure to make a rejection over that art does not indicate the art doesn’t apply (assuming it’s not on an IDS).”
That’s an interesting, possibly informative, and clearly contradictory response from someone who may be an examiner.
So let’s say a patent issues with prior art cited both in the spec and on the IDS (the two should match?) Whether or not the examiner has previously made a rejection based on those cites, does the granted patent indicate a USPTO decision to allow the new art over those cited prior references?
I stopped using search consultants about 10 years ago. They were good enough in mechanical and simple electrical stuff, but didn’t do well at all in software. The old school used an outsider for buck-passing. Now, I use searchers to help kill others’ patents, but then the budgets are a lot bigger.
We do some kind of prior art search as a matter of course for all original patent applications. Even if the inventors and we know the art well, it pays to spend an hour poking around just in case.
I see no point in discussing the closest prior art in my applications. Case law shows how this can come back to haunt you.
A prior art search is invaluable for a variety of reasons. Those already posted are great. In addition, I routinely find prior art which is close enough to merit a discussion with the inventor. In such cases, I almost always discover new aspects of the invention or the inventor decides to supplement his disclosure after considering the prior art. Not only is the prior art a tool to make sure that your claim crafting doesn’t inadvertently cover distinct prior art, but it can be a tool to encourage discussion.
To draft an application and just “hope for the best” is unwise and unsound. It is very common to find prior art both before and after drafting claims that affects the way the claims should be presented – I don’t care how well you “captured the essence of the invention”. Further, should dead-on prior art come up two years into prosecution, you have wasted client money and especially thier time. I have had scenarios where the prior art was sufficiently close that the inventor went back to the drawing board and invented even better solutions than his previous attempts. This is the difference between active advocacy via the drafting process and passive translation of a disclosure into patent jargon.
YES – always do a pre-filing search. In fact – do a pre-drafting search. I practice in the Biotechnology area. WHY – because the risk of filing on something already disclosed is high; and cost of product development is high; and time it takes to switch projects and get new inventions/leads is slow.
In biotechnology there are a lot of good publically (free) available search sites – PubMed, NCBI GenBank, EMBL, Google; and other good databases you pay to have access to (CAS, DerWent, MicroPatent, etc.)
I always skim the hits to identify the pertinent hits, and then at least read the best of those in depth (I have a recursive process).
I don’t have access to the PTO search rooms, and have never paid a search firm, or practiced outside of Biotech area, so cannot address those issues
Invention is a revelation. Invention is knowing that something (process,methodology)can be done in a better way than the current methods or embodiments available to accomplish that feat-then the revelation hits. Sometimes they’re great-other times not so great-you put your thought process into the ones that hold promise( after a thorough prior art check). As far as a lengthly backround ramble-its important-it distinquishes your relevation from the current. Also,you know a great idea when it hits you- I knew there must have been a way to do this feat better-go into the patents and patent apps.online and study-lots of men after the same thing-some get patents,most of them shitty-never going to see the marketplace-too expensive to make-now you start thinking outside the box- then one day during aerobic exercise(too much oxygen to the brain,apparently) it hits you-everybody’s got it wrong-all you got to do is this and you got it(i had to sit down and compose myself)-wrote a PPA application in two days with a pretty long backround-after all,its your idea/invention that breaks the ceiling down-you’ve got to show how your embodiment is by far the best, and you’re on your way. If it really accomplishes something-and it can be manufactured fairly inexpensively- its a potential million dollar idea. I’m going to have all tool companies sign off on a non-disclosure-compete paper besides the PPA and USPTO file no.-I’m not sure that a PPA is enough for a really good revelation.It should be fun.
Alan Harrison wrote:
“patents that explain in their specification how they are different from close prior art become much more difficult to search against for subsequent re-exam or litigation … Because the examiner has considered and dismissed a swath of relevant prior art presented by the applicant”
wrong. If it’s not on the IDS, I don’t consider it. If it’s in the spec. and anticipates/renders obvious your invention I will probably cite it against you.
Bottom line: art in the spec. can be a useful place to start a search, but failure to make a rejection over that art does not indicate the art doesn’t apply (assuming it’s not on an IDS).
From a searcher / patent agent’s perspective, patents that explain in their specification how they are different from close prior art become much more difficult to search against for subsequent re-exam or litigation … Because the examiner has considered and dismissed a swath of relevant prior art presented by the applicant, it becomes really challenging to produce relevant references not already explained away.
Btw, as a law student, does Chevron deference apply to USPTO decisions?
And how do you handle a reference that is not prior? Say you are working on a CIP several years after your first application. In the interim you have discovered your exact invention, but not published or sold before your date of invention.
So do you list it in the “background”, with prior art? Create a new heading, “foreground”? Not give credit to your fellow inventor?
…….and if the EPO search report is too slow or too expensive, why not make the priority application at the UK PTO, get a search report within 6 months, and write the PCT as a story that builds on the art you already know, plus that which the UKPTO has found. Of course, one can’t handle the 18 month A publications of applications filed in the 6 months before your application, but you only need novelty to distinguish over those (at least in ROW). In my experience, this strategy gets you past most Examiners and, with filings less than 6 months before your own, you seldom have any issue. Tell me, does the need for a foreign filing permit block this option, for US residents? Another thing: whenever one wants useful claims outside USA it is well to draft in a way that will get those claims to issue. US-style drafting impedes. But that’s another story.
We use to file priority patent application before the EPO in order to have an “official” search done and to obtain a Written opinion on patentability (generaly with a 9-monnth period). Then, we are in a position to prepare the corresponding International patent application.
Steve (above) lays the bottom line: patents are best considered historically based storytelling, and there is no substitute for knowing history, and using it to one’s advantage.
I agree with Gary Odom. I like specs that have a good discussion of the prior art and why the invention is different. I’ve had several cases where they say “Our invention has feature X” but don’t say how it’s any different than what’s already out there.
As for citing art on the IDS, please cite art if it is relevant but don’t dump hundreds of unrelated art references on the examiner as certain companies like to do.
Lastly, have someone read over the claims and check for antecedent basis issues and grammar problems. An application without an error is rare. And you wouldn’t believe how many amendments create new problems.
Dear Dennis,
I am an IP practitioner in the generic pharmaceutical space.
We do prior art searches for the following reasons [in the patent filing context]:
a) To know the most relevant prior art;
b) To be able to pre-empt the Examiner qquestions/ rejections.
c) A + b above give you a fair idea of what you can draft in claims and what you should be prepared for in the actual grant.
Regards,
Sandeep.
I tend to like Steve’s approach. Why is everyone afraid to even mention a piece of prior art these days?
I’d like to hear others comments on how in-depth others read
the resulting references. I have on occassion found very
relevant prior
art buried deep in a lengthy specification.
If the prior art is in the claims,
then it will be in the drawings and is easy to spot. When it is buried
in the specification and not claimed, it takes a lot longer to uncover. This equates to money for the client. To do a thorough job may take 10-15 hours to wade through a stack of prior art references. I need to increase my speed by I also want
to do a good job. What techniques do other
use to be effective?
I’m new at this, so any advice would be welcome.
This is a tough area to discuss because patent prosecution is like art and no two artists are the same.
I think searching is very valuable apart from clearance. There may be times where you know what the invention is, but some piece of prior art makes you describe it in a way you might not have. For example, you might describe some aspect of the invention that was thought not to be a big deal, but now important to overcoming the prior art. Same invention, you just have more variety of words to claim it with.
This is especially important if you write terse applications.
As for discussing the prior art, I again think this is invaluable. First, from my examiner days, there was nothing worse than an application which was virtually just a technical description.
The best patents tell stories and therefore interest the reader.
The best patents concede that there may be close prior art that needs to be distinguished on your terms (in the spec) rather than after the examiner gets a totally wrong impression of the art carved in stone in his head.
Lot of rambling, but just my thoughts.
I think the litigators spend too much time telling the prosecutors what to do. My view is, if I cannot get a patent, I certainly will not be able to enforce it, no matter how Festo-proof it was written.
I think it depends on the art area. A longer description is required in some art areas for 112 resons.
I agree completely on characterizing art in your patent – only under very limited circumstances is it EVER called for.
We always search. I just wrote about this not too long ago. See:
link to erikjheels.com
There is not much worse, in my opinion, than an application that starts with a serial listing of 10 prior art patents with a paragraph describing each. This is typically the result of a practitioner choosing the 10 “closest” patents from a prior art search. Almost invariably, the author writes the claims in order to fit in and around the 10 documents.
So rather than claiming what the invention is, the invention is altered to fit the KNOWN art. What often results when good art is later cited by the PTO is that the description is some Frankenstein text that has odd numerical limitations meant to circumvent the know prior art but that do nothing but confuse the matter when the PTO cited art must be countered.
One last note to the inexperienced or poorly led – avoid writing anything but terse backgrounds – in my opinion, the surest sign of weak drafting is a lengthy background section. In fact, I’d argue that breaching one standard page is per se a blantant drafting mistake, barring special circumstances (which are very rare). The Background is a crutch to fatten up skimpy apps, et alia.
It depends on the art and your familiarity, as the practitioner, with that art.
My experience with prior art searches is that the ones you pay for tend to be garbage. More times than not I’d have the PTO find a doc that wasn’t in the prior art search and the doc is much closer art than the 50 documents cited in the art search results.
On the other hand, if neither the inventor nor the pratitioner is familiar with the prior art in question, then an art search makes a lot of sense. In this case, you need to find the approximate boundaries of the art so that you can get your claims focused correctly.
Finally, I note that is seems bass ackwards to me to have an art search done so that you can “claim around the art”.
Do you have an invention or do you not?
If the client comes to you and says, “we want to claim something in this art, but we don’t know what to claim, help us”, then it might make sense to have an are search done and then map out the results, looking for open areas.
But if the client comes to you, as is most often the case, and says, “we have an new item we’d like to protect – we take a piece of rubber and put a skriket in it” then what is the use of a prior art search that costs 2k or more?
Simply draft the application so that the broadest claim is a skriket in rubber and the specification supports embodiments where the critical variables are called out. That is, perhaps, the size of the skriket molecules and the rubber composition or whatever.
Then, when the art comes back from the PTO and the PCT or some foolish 3rd party submitter, tweak the claims or decide there’s nothing worth protecting.
That is, if the art of record teaches the exact preferred embodiment, then move on – something else likely wasn’t worth protecting anyway.
I have filed and prosectuted hundreds of applications in the U.S. –
The percentage of times that art was so close so as to make further prosecution meaningless – about 5%.
The percentage of times that a prior art search resulted in not filing because the prior art was too close – never. Granted this pool is smaller.
So if it’s 5k an app and a search costs 2k and we assume that the prior art search would catch the critical art, then it costs, from my experience, about 40 grand to save the PTO and PCT costs on one case. Figure the cost to file PCT is 3k, and this means that you spend 40 in searching fees to save 8 in drafting and filing fees.
Finally, to the argument that a prior art search allows you to “draft around” or “draft with an eye on” the prior art, I can only say that I think this is a crutch that makes many practitioners feel better. I think it often makes up for poor claim drafting. There is not much worse, in my opinion, than an application that starts with a serial listing of 10 prior art patents with a paragraph describing each. This is typically the result of a practitioner choosing the 10 “closest” patents from a prior art search. Almost invariably, the author writes the claims in order to fit in and around the 10 documents.
So rather than claiming what the invention is, the invention is altered to fit the KNOWN art. What often results when good art is later cited by the PTO is that the description is some Frankenstein text that has odd numerical limitations meant to circumvent the know prior art but that do nothing but confuse the matter when the PTO cited art must be countered.
One last note to the inexperienced or poorly led – avoid writing anything but terse backgrounds – in my opinion, the surest sign of weak drafting is a lengthy background section. In fact, I’d argue that breaching one standard page is per se a blantant drafting mistake, barring special circumstances (which are very rare). The Background is a crutch to fatten up skimpy apps, et alia.
Prior art searches are always best for all of the above stated reasons. I often have trouble getting clients who are MD, PhDs or both to pay for one though, they think they already know it all. Unfrotuantely, I have also found they have a penchant for not telling about the “most relevant” art.
STN is my search engine of choice, and their ScienceIP service is very good if you don’t want to go it yourself.
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