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.

Expansion of NPL

Here at SPSG, we are constantly improving not only our search techniques / heuristics, but also the tools in our arsenal. One source of prior art frequently overlooked by other search firms is NPL (non-patent literature). Due to frequency and demand by our petrochemical / oil clients for our search services, we are proud and excited to announce our access to full-text coverage of Onepetro.org (Society of Petroleum Engineers). Onepetro is the single best source of petrochemical white papers and NPL. While we have always covered Onepetro in our searching, we now offer full-text access as well.

We pride ourselves on our knowledge and experience, and are always aiming to have the best tools at our disposal. For more information, please contact us at info@shermanpatentsearch.com, or call our offices at 626-432-7292.

Dangers and Risks in Offshoring Patentability Studies

Outsourcing intellectual property research overseas, such as to India, is used by some US practitioners seeking cost savings. However, there are inherent risks and pitfalls associated with the practice of outsourcing patent studies overseas that one must carefully consider.

First, offshore patent search firms typically lack fundamental experience in U.S. patent prosecution and the laws and standards that determine patentability in the U.S. For example, a patent search firm that comprises former USPTO Examiners will have a distinct advantage in terms of patent prosecution experience, patent search skill, and specialized knowledge of classification systems that an offshore firm will typically lack. Also, experience as a former USPTO Examiner provides powerful insight into nuances of certain art areas, such as business methods and how the USPTO analyzes prior art in that particular field. This lack of training, experience, and skills can potentially result in substantial missed prior art as well as search inefficiencies.

Second, on July 23, 2008, the USPTO issued a notice that the offshoring of technical data necessary to prepare a U.S patent applications is not covered by a foreign filing license issued by the PTO. The export of such technical data for such a purpose is subject to the EAR (Export Administration Regulations) and may require a license from the Department of Commerce (specifically from U.S. Bureau of Industry and Security). Various fines and penalties may result if a proper export license is not obtained prior to offshoring technical data. Thus, careful consideration must be taken when deciding whether to engage an offshore firm for such a purpose.

Third, there are substantial unknowns in ensuring that an invention will not be stolen and potentially manufactured or implemented offshore. There appears to be no certain, definitive method to protect the inventor(s) and their invention disclosures in this scenario

The primary attraction of offshoring patentability studies is cost-savings. However, there are ways to engage a U.S.-based search firm and still save money . First, only deal with smaller/boutique search firms. Boutique search firms have lower hourly rates and lower overhead. Second, some boutique search firms offer a “knockout” or abbreviated patentability study, which focuses on high-level / 102-type prior art, as well as potential 103-type references. An abbreviated patentability search by an efficient, highly experienced U.S. firm often surpasses a full patentability search conducted by an offshore firm, in terms of both accuracy and exhaustiveness.