Late Stage Patentability Searches – Increasing Business Value of a Patent

Typically, patentability searches are ordered prior to filing a patent application. They are useful for locating prior art relevant to the novelty of an invention. However, patentability searches ordered at a later stage are also advantageous. Ordering a patentability search closer to allowance increases the business value of the patent in several ways. First, it provides a simple list of references to cite in an information disclosure statement to ensure these references are on the face of the patent at issuance, thus weakening the value of these references in invalidity proceedings. Second, a late-stage patentability search provides an updated list of competitors potentially infringing the soon-to-be issued patent by listing similar applications filed after the application date of the invention subject to the search but only recently published. If the patent owner intends to enforce the patent, this list of competitors provides a starting point for pre-enforcement investigation. It is important to note that for this purpose, the search firm should not use the earliest priority date of the invention subject to search so that all relevant prior art is found. Third, a late-stage patentability search provides valuable insight into the strength of the patent by finding potentially invalidating prior art before issuance so that amendments or continuing applications may be filed to guard against that prior art. Thus, a patentability search conducted shortly before allowance can easily increase the value of the patent.

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