I generally recommend my clients not spend money on a prior art search before filing a patent application in the United States for these four reasons:
1. It’s Not Required by Law:
U.S. law requires that known prior art be submitted with the filing of a patent application. It does not require a prior art search before filing a patent application. It’s optional, so in general, opt not to do one.
2. It’s Very Expensive To Do It Right:
Prior art is analyzed against the claims. As such, the claims have to be fully drafted for a good prior art search. Essentially, this means that the patent application has to be nearly fully drafted, which incurs attorney’s fees to draft and analyze the claims with respect to each prior art reference found. This can cost as much or more, per prior art reference, as the attorney’s fee for drafting the patent application. It is very expensive to perform a good prior art search and analysis.
3. It Rarely Finds Prior Art That Can’t Be Argued Around:
In my thirty-seven years of experience, rarely is there a piece of prior art that arises in prosecution that can’t be argued around. This is based on the prerequisite that the patent application is well prepared. In my experience, this happens once every several hundred patent applications.
4. It Creates More Problems To Solve:
Too often, a poorly conducted prior art search yields a large number of references (One hundred or more). This creates a big problem: What are you supposed to do with all of the references? Should you submit them all and run the risk of inequitable conduct? Have patent counsel review them at an enormous expense? Neither is a good option.
If you are planning on filing a patent application with an attorney and they want to do a prior art search, ask them to justify the expense. In most circumstances, there isn’t a strong justification.
*Please note that this article is not legal advice; it is not a legal opinion; nor should you rely on it as legal advice or as a legal opinion. This article merely expresses the author’s general thoughts on a topic regarding the business of patents. Nothing in this article establishes any form of an attorney-client relationship between you, the reader, and the author of this article.
