At SPSG we have a very particular best practices, based on time-tested methods as well as USPTO Examiner experience. One of the cornerstones taught to our team, is that no two searches are identical, and that each search requires its own unique approach. This concept requires the searcher to dynamically approach each search, essentially responding to the art as it is shown to them. For example, with respect to invalidity studies, it is imperative to have a clear understanding of the prosecution history, prior to even inputting a single search query. Understanding where the Examiner searched and subsequently failed to search, is critical in formulating the most effective search strategy. This formulation results in a unique approach to that particular search that takes into account the prosecution history, as well as an understanding of how much ground the Examiner actually covered. Invalidity studies are just one example of how every search requires its own identity.
There are indeed discrete steps that should be taken in most / all searches, for instance, citation searching. It is important to note that certain steps have more priority in certain searches. The goal of a successful search is to maximize accuracy, and minimize missed art. We can maximize accuracy by finding the most efficient route to the best art. The way to accomplish this efficiency is to dynamically approach each search, based on experience and being cognizant of the art as it is uncovered.
We recently had a client approach us with a potential search. The client then proceeded to ponder if a pre-filing patentability search is worthwhile, since the USPTO searches the invention anyhow. We will tackle this issue from two perspectives.
First, in my Examiner days, I recall examining applications with no IDS. No cited prior art of record, and clearly based on the claims drafted, and the very evident, anticipatory prior art located during my search, a pre-filing patentability search was not conducted. I would simply apply an all-encompassing 102b reference, and the application would become abandoned. The attorney’s client likely spent at least $4-6K on the application. A patentability search costs, on average, $800. With a small investment on the front end, the aforementioned aimless, low quality filing could have been improved to circumvent the prior art, or not have been filed altogether. In both instances, the client would have saved their money. Performing a quality pre-filing search helps to prevent aimless filings, and focuses the invention on what is actually potentially novel.
At SPSG, we have come across a substantial number of novelty searches that ultimately resulted in the client not wanting to move forward in the application, because of the relevant prior art cited. Had the attorney elected to “let the USPTO do the search” – the client would’ve wasted thousands of dollars on an aimless and low-quality filing. With this experience, we could never be a proponent of skipping a pre-filing search, and going straight to drafting claims. The search is the foundation of the application. It guides the practitioner as to what subject matter should be claimed, and how said subject matter should be claimed.
Part of our best practices here at SPSG, is knowing when and if to take the time to consult with a technology-appropriate USPTO Examiner for a particular search. When conducting a search, after exhaustive heuristics, boolean logic, and USPC/IPC/CPC classification, there are typically two circumstances that prompt a USPTO search consult:
1. Very little relevant prior art located, in light of knowledge / instinct of existing prior art
2. Unapparent best-fit classification (e.g. substantially multi-disciplinary, etc.)
It is vital to note here that most USPTO Examiners, when performing a USPC search consult, will typically only recommend best-fit classification areas. The search areas they provide are often not an exhaustive list of classifications to search. This distinction is important because USPC/IPC is not perfect.
Relative to #2 above, an Examiner in a specific art can provide guidance as far as which multi-disciplinary classes would provide the highest potential. Again, this guidance can serve as a short-cut of sorts, but typically does not represent an exhaustive scope.
Thus, consulting with a USPTO Examiner for a search consult can be highly effective when applied in the right circumstances. The process of consulting with Examiners takes time and effort (in many cases, even reaching a technology-appropriate Examiner), but can prove pivotal in locating those hard-to-find prior art references.