Intellectual Property Law for Engineers, Scientists, and Entrepreneurs. Howard B. Rockman
most complete and accessible library of prior art is housed in the electronic patent and published patent application files of the U.S. Patent and Trademark Office. U.S. patents issued since the year 1790 can be searched on the U.S. Patent & Trademark Office website (www.uspto.gov), and further prior art can be accessed on other available websites. It is possible for an inventor to make his or her own preliminary patentability search; however, it is usually wise, and cost‐effective, to have an experienced professional conduct the search.
The patent searcher will normally provide the patent attorney with copies of or links to relevant patents, literature, and other materials uncovered during the search, but the searcher normally does not provide her or his patentability review or evaluation of the patents. Nor does the searcher usually provide a legal patentability opinion. The results of the search are commonly forwarded to your patent attorney, who conducts an evaluation of the content of the prior art and provides you with a legal opinion as to whether or not your invention is sufficiently novel and non‐obvious over the prior art to support the granting of a patent. The report you receive from your patent attorney should (a) set forth an evaluation of each relevant prior art reference uncovered by the search, commenting on what each reference does and does not disclose about your invention, and (b) comment on whether any combination of the uncovered references might be used by a Patent Examiner to support an argument that your invention is obvious in view of the teachings of these combined references.
It is important to keep in mind that in certain circumstances, it may be practical to forego a search before filing a patent application. Thus, if the subject matter is too difficult to search, or the product has been scheduled for production before a search can be conducted, or where the inventor has years of experience and a keen knowledge of the prior art, you may decide that it is not cost beneficial to conduct a search and that it would be better to file the patent application as soon as possible.
If the search reveals that the invention is not patentable, this will save the inventor the cost of filing the patent application. On the other hand, if the search reveals that the invention is potentially patentable, the search provides an additional valuable function in furnishing useful background information and advice to the patent attorney as to the scope of the prior art, enabling the patent attorney to draft more effective patent claims covering your invention over the prior art. Further, as stated previously, the patentability search produces a library of technical information the inventor can use in further development of the invention to which the search was directed, or improvements to his or her invention. This, of course, must be done without infringing any of the unexpired patents uncovered by the search. The subject of patent infringement will be covered in Chapter 17.
8.2 PATENTABILTY SEARCH PARAMETERS
The patent attorney you have contacted normally will not perform the search himself or herself, and will solicit the services of an experienced patent searcher. Therefore, the patent attorney must be able to furnish the searcher sufficiently accurate information regarding the description of the invention, its function, its advantages, objectives, and purpose; so that the searcher’s direction will be focused on the important features of the invention the inventor has determined provide novelty and non‐obviousness. Note also that the information about your invention furnished to the search associate by your patent attorney constitutes a confidential disclosure, and the confidentiality of that disclosure is protected by the searcher as the search is conducted. Thus, the disclosure of the invention to the search associate does not jeopardize any U.S. or foreign patent rights.
Since the subject matter of any search of the prior art is finite in quantity, no such search can be complete, in view of all the publicly available or generally known information relating to your invention which bears upon the questions of novelty and non‐obviousness. To conduct a search of all publicly known prior art worldwide would be cost prohibitive, if at all possible. Thus, do not be surprised if the Patent Examiner, or an accused infringer, uncovers prior art not uncovered by your search.
Any later‐appearing relevant prior art materials you become aware of during the examination of your patent application after the application is filed with the U.S. Patent & Trademark Office must be submitted to the Patent Examiner for consideration under Rule 56. Any relevant prior art you become aware of after your patent has issued may be submitted to the Patent Examiner for consideration in a reexamination proceeding or other post‐grant proceeding established by the AIA. These procedures are discussed at Sections 11.11 and 18.10, respectively. The advantage of a reexamination or post‐grant proceeding is to have the Patent Examiner consider the later‐found prior art, and to decide that the claims of your patent define novelty over the later‐found prior art.
Besides the material lodged in the U.S. Patent and Trademark Office database, other sources of information that constitute the prior art comprise foreign patents and published foreign patent applications, information in scientific journals, technical bulletins, product literature and brochures, safety data sheets, trade publications, press releases, product or service catalogs, and the myriad of information posted on the Internet. In the best of all possible worlds, it would be desirable to be able to evaluate patentability with reference to all existing relevant prior art; however, to amass this amount of information is a practical impossibility. Thus, the patent searcher usually looks only to U.S. patents and published U.S. patent applications, relevant scientific or technical published literature that is available, such as on the Internet, and foreign patents and published patent applications as available.
Where the invention is of significant importance to the inventor or the inventor’s employer, a search of foreign patents can be obtained on the websites of several foreign patent offices, such as https://worldwide.espacenet.com, http://www.wipo.int/patentscope/en, and https://patents.google.com. Espacenet is the online search website of the European Patent Office (EPO) with free access to over 100 million patent documents. Also, you or your patent attorney could contact search associates in Japan, China, Taiwan, Hong Kong, India, South Korea, and other areas of technical innovation throughout the world to conduct searches at their national patent offices. However, the extent of each search, as anything else, must be weighed against its cost and expected benefit. It is normally concluded that the patent search conducted on the database of the U.S. Patent & Trademark Office, plus an Internet search, provides prior art material that reliably may be extrapolated to the full content of the prior art to a certain degree and at a reasonable cost.
8.3 ADDITIONAL TYPES OF SEARCHES
In addition to the patentability search, there are other searches for existing patents and published technology that can be conducted. Keep in mind that the patentability search discussed above is directed to answering the question “Is the invention sufficiently novel and non‐obvious to be patentable?” Or to put it in a more practical way, “Should the inventor proceed to spend his or her resources to obtain a patent?”
8.3.1 The Freedom‐to‐Use Search
Since others normally have obtained patents in the field related to your invention, a freedom‐to‐use search should be conducted upon completion of the development of the product or process embodying your invention, which asks the question “Will my new invention, as embodied in a marketable product or process, infringe another unexpired patent of which we are currently unaware?” By way of a hypothetical example, suppose your new invention relates to a pencil having an eraser on one end. It would be important to find out whether anyone holds a patent on a pencil alone, because the manufacture and sale of your pencil plus eraser will infringe the earlier patent owner’s right to exclusively make, use or sell pencils. Thus, the purpose of a freedom‐to‐use search