Patent and Prior Art Searching

• Author: Dylan O. Adams
• Profession: Seattle-based patent attorney
• Pages: 67-85

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Patent and Prior

Art Searching

“If you know the enemy and know yourself you need

not fear the results of a hundred battles.”

—Sun Tzu, he Art of War

During exami nation of a patent application, a patent examiner con-

ducts at least one prior art search to determine whether the clai med

invention is new a nd nonobvious. In cer tain situat ions, inventors

would be wise to conduct their own preliminar y prior art search to

nd out what examiners might come across during a search so as to

assess the chances of success before investing time and money in a

patent application. Patent attorneys and speciali zed patent search com-

panies can assist with doing a search but the cost should be carefully

considered given that even the best search will st ill result in a “maybe.”

Inventors can also try their ha nd at doing a search, but nding and

analyzing relevant patents and other prior art is oen d icult for rst-

time se archers.

Prior art can be any publicly available product or public technology

disclosure. Technology disclosures can be found in formal publica-

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68 PATENTS DEMYSTIFIED

tions such as scientic or medical journal a rticles, but can also be from

informal sources such as blog posts or YouTube videos. A product itself

can also be considered prior art along wit h catalogs or advertisements

for a product. Postings on crowdfunding websites like Kickstarter or

Indegogo can also be used as prior art. Although such a wide variety

of things can be used as prior ar t, in the vast majority of examinations

patent publications are the only types of prior art that are considered

by the examiner.

By default, the contents of a patent application are published while

it is pending and then again if it issues as a patent. Both of thes e patent

publications are most oen used by examiners because they a re easily

searched and tend to discuss technology in more depth compared to

other types of potential prior ar t. is is why the term “patent search”

is sometimes used interchangeably with “prior art search.” A “patent

search” is simply a prior art search that is li mited to patent publications

and does not include a search for the many other types of publications,

disclosures, or products that could possibly be used as prior art a gainst

a patent application. Although a search for all types of prior art is the

most comprehensive, limiting a pre-ling search to only patent publi-

cations is oen the most cost-eective. In some cases, forgoing a search

altogether is the best choice.

Although a patent or prior art search is an integra l part of the exami-

nation process at the USPTO, applicants are not required to perform a

search before ling a patent application. However, if applicants or inven-

tors are aware of any relevant prior art, whether or not it was discovered

during a formal search, they must submit thi s prior art to the USPTO so

that it can be considered during examination of the patent application.

Failure to disclose known relevant prior art is grounds for invalidation

of a patent. Given that performing a prior art search is optional, can have

limited value, and even has potential downsides, applica nts should care-

fully weigh the pros and cons before initiating a se arch.

THE BENEFITS OF DOING A SEARCH

In certain cas es, doing a prior art search before ling a patent applica-

tion can be extremely benecial. A search can provide a preview of

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