Why prior art searches are a good idea

Do a prior art search before filing your patent. If your idea is not new, you will save time and money. It will also help your attorney write better claims.

Prior art searches: Before spending a lot of time in a new invention, do a patent search. This will let you see if there is any prior art (earlier patent or non-patent publications) that might cause problems. If you haven’t found any prior art that concerns you then you probably haven’t looked enough yet!

Why do this? Because eventually, skeptical USPTO examiners will be going through your patent application. They want to reject your application, usually as being not novel or obvious in view of prior art.

Patent examination is an adversarial process. Patent examiners have, in effect, quotas that require them to initially reject most patent applications. It is a bit of a game, like tennis. The examiner initially rejects by citing some combination of prior art.  They then hit the ball back onto the applicant’s side of the court. The examiner is expecting the applicant to hit the ball back onto the examiner’s side of the court. They expect the applicant to submit convincing arguments pointing out where the examiner was wrong.

If you can convincingly argue that the examiner is wrong, then usually the examiner will allow the patent. You win! But if you cannot argue back convincingly, you lose. This is like dropping the ball or hitting the ball back out of bounds. That patent application is going nowhere.

How the patent examiner works

The patent examiner typically starts by doing computer searches for prior art. They will use search terms that the examiner thinks will work best. This computer search will come up with unexpected citations. The examiner, in turn, will usually combine these in unexpected ways to try to show that the invention is “obvious”.

Because of the examiner has a quota to initially reject almost everything, often these initial rejections are unreasonable. Unreasonable rejections are “good news” in disguise because the applicant can then rebut these by reasonable arguments. It is the reasonable rejections that are the real “bad news”. This is because these are harder to argue against. So before putting a lot of time and money into an invention, do at least some initial checking. Find out what the examiner (or for that matter, a competitor) might try to use against you later. This is the idea behind a “feasibility study” type prior art search.

Of course, if you are an expert, you can decide that you are sufficiently familiar with your field. In this case, no additional prior art searches are needed. The USPTO will its own independent search anyway. The only legal obligation you have is to inform the USPTO of the most important prior art that you know about.

But if you are working in an area that is new to you, prior art searches are worthwhile. Many good sources are available, including Google, Google patents, Google Scholar, the USPTO patent database, and the WIPO patent database.

Almost everything has prior art

Inventors usually underestimate the amount of prior art that a patent examiner can use against their invention. Prior art is not just patents.

In the US, the USPTO can use anything published more than a year ago against your invention. This can include your own publications. This includes that “cool” YouTube video, that “cool” social media posting, or that research paper/thesis. Foreign patent offices are even worse in this regard. Patent examiners know that often the inventor’s own worst enemy is the inventor’s own earlier publications. As a result, patent examiners often specifically search for the inventor’s own publications and internet postings to use against them.

The invention is your baby. It’s hard for you to evaluate it dispassionately! This problem can result in sub-optimal prior art searches. The inventor may, perhaps subconsciously, avoid search strategies that may kill that shiny new idea.

Advantages of getting expert help

Here, there are several advantages to having a patent attorney do a quick feasibility prior art search for you. They do prior art searches all the time, and are less attached to your idea. This lack of emotional involvement and expertise makes it easier to think of thorough search strategies. The search helps the patent attorney understand variants of your idea better. This can translate into a better patent application with better claims.

If something highly relevant comes up, then you can evaluate your new idea better. The scope of the initial idea may be altered or expanded, and a better patent application can result. Worst case, if it becomes clear that the idea has been done before, then time and money can be saved. Alternative ideas can be explored instead.

In conclusion, “feasibility study” type prior art searches are a good way to check if a new idea is patentable. Although you may find something that looks like a tough obstacle, this might help you. Often these initial obstacles encourage further thinking and improvements to the initial idea. This can result in a better patent down the road.

Note that “feasibility study” type prior art searches are only one type of search. Another type of patent search. called a “freedom to operate” search, also exists. These represent a different and more extensive type of search, and this is a different topic.