Less Obvious Benefits and Risks of Patentability Searches

Patentability searches have many benefits, some less obvious than others. These benefits include saving prosecution costs and making informed business decisions regarding pending applications. Patentability searches also have risks that are less than obvious. Knowing these benefits and risks enable you to distinguish a high quality search from a low quality search. Moreover, understanding what to expect from a high quality patentability search enables anyone, even those with limited patent law knowledge such as inventors and business executives, to communicate effectively with law firms representing them.

Beyond providing a sense of the likelihood of obtaining a patent on an invention before filing an application, patentability searches ordered after filing an application indicate the value of continuing prosecution. Perhaps a new law firm has been retained to continue prosecution or the patent application has been assigned to a new entity. These organizations may find value in a new patentability search to identify whether the $5,000-10,000 in attorney fees needed to pursue prosecution will result in a valuable patent. Many assert a “wait and see what the examiner cites” philosophy instead of abandoning an application since the examiner may not find relevant art or may suggest amendments that result in allowability. But this is a costly gamble. Even if one of these scenarios plays out, the resulting patent is unlikely to be valuable because either the patent will be susceptible to invalidity proceedings in district court or at the patent office or the patent will be so narrow as to be unlikely to be enforced. Moreover, once an application has received multiple office actions, so much has been invested that abandoning the application may be too difficult to swallow. Whether to continue prosecution, at the cost of several thousand dollars in attorney fees, is an important decision that would be strengthened with a patentability search early in the process.

Another potential benefit of a patentability search is the search may provide an indication of whether a freedom to operate search would be a beneficial follow up. Even if excellent prior art is found in the patentability search, resulting in a decision to abandon or not file an application, an organization may still choose to continue with development and distribution of a product. A patentability search may reveal patents in effect that could be enforced against the product. Although a patentability search is nowhere near comprehensive enough to assure freedom to operate, if patents in a patentability search are revealed to be troublesome to operations, the patentability search may be used as justification for a freedom to operate search.

Patentability searches further benefit patent applicants by shortening prosecution. When an information disclosure statement (IDS) is filed with the application, the examiner has a jumping off point and therefore will be unlikely to need as much time for searching. Moreover, the examiner may issue fewer office actions since the references in the IDS have already been addressed. Thus, the patentability search saves significant prosecution costs and attorney fees.

Risks in patentability searches exist beyond just discovering that an invention is not patentable. First, in analyzing a report, one must be careful to not dismiss references for the wrong reasons, such as functional limitations. A quality search firm provides only the most relevant prior art. Even though you may intend your invention for a particular use, that does not provide a meaningful distinction from prior art. Every piece of prior art cited needs to be carefully considered. Second, the references in the report must be read in combination. Reading each reference in isolation may lose the bigger picture of how two references combine to render the invention obvious. Finally, the patentability search should not be used as a substitute for a freedom to operate search. As stated above, patentability searches may provide an indication that a freedom to operate search would be beneficial, but it is not a substitute since the searcher employs different search techniques for a freedom to operate search.
Patentability searches are powerful tools for business decisions. They easily save several thousand dollars in attorney fees, but they must be carefully analyzed. This is much easier if the report is concise yet thorough. SPSG carefully evaluates hundreds or even thousands of references to compile its custom report of only the most relevant prior art and includes project notes to summarize the findings. Such a quality report provides the above stated benefits.

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