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04

Sep
2016

In Uncategorized

By Andrew McAleavey

Are Patentability Searches Worth It?

On 04, Sep 2016 | In Uncategorized | By Andrew McAleavey

The question of whether or not an invention is patentable is a fundamental one in patent law, and to answer that question, the patentability search and patentability opinion are basic services offered by all patent attorneys and agents. But are patentability searches and opinions worth it?

In many cases, yes. Knowing whether or not your invention is patentable up front, before a patent application is prepared and filed, can save thousands of dollars in the long run. Even if the search turns up nothing of particular relevance, careful study of the references that are uncovered can help in the writing of the patent application, resulting in a better work product.

At least, that’s what I usually tell people. The reality can be much more nuanced. First, the law: patent applicants have no obligation to perform a pre-filing search of the literature. However, if a search is performed, patent applicants (and others associated with the preparation of the application) do have an obligation to disclose whatever is located to the USPTO, typically in the form of an information disclosure statement (IDS).

Over the years, the cost of a quality patent search has crept up, to the point where a complex technology can cost almost $1,000 to search, and a thoughtful, carefully prepared patentability opinion based on the results of the search can cost another $1,000. Moreover, complying with the USPTO’s rules on disclosure and preparing IDSes costs money, and if the applicant has a lot of interrelated pending patent applications, the costs can multiply. With all of those costs in mind, some patent applicants opt simply to begin preparing a patent application without first performing a search. “If the USPTO finds anything relevant,” they’ll say, “let them tell us what the problem is and we’ll deal with it then!”

To other applicants, having a patent application on file ASAP and being able to call the product “patent pending” is more important than whether the invention is ultimately patentable. In these cases, the applicant usually opts to forego patentability searching, relying instead on the USPTO to search the application well. For a patent applicant at the forefront of his or her field (and thus aware of what’s out there), this may well be the right choice.

But to an engineer like me, those qualitative answers are necessary but not sufficient. Thus, I decided to step away from the qualitative and see if I could find some data to answer this “simple” question: are patentability searches worth it?

To answer the question quantitatively, I had to reformulate it slightly: of cases in which at least one IDS was filed by the applicant, how often did the patent examiner either use one of the applicant-cited references in a rejection or comment, in writing, on a reference’s disclosures? In answering the question, I decided to use a subset of my firm’s issued utility patents from 2013-2016, choosing to include only those patents for which my firm wrote the application. The results:

  • Number of patents: 27
  • % of patents in which an IDS was filed: 100%
  • % of patents in which an IDS reference was used in a rejection or discussed in writing by the patent examiner*: 51.85% (n=14)

*I include 102/103 rejections as well as written comments on the teachings of particular references in the Office Action. I did not include cases in which the examiner merely cited the reference on a form.

Thus, with my admittedly very limited data set, it appears that applicant-submitted IDSes influence the actual course of prosecution about half the time.

It’s hard to say what happened in the cases where examiner chose other references and the applicant’s IDSes had no apparent impact on the course of things. The quality and focus of the search can be an issue. Sometimes, the applicant will ask for a search and, based on the results of the search, choose to pursue a slightly different invention, meaning that the results of the search are less relevant. Other times, a search will simply fail to find the best art (searching is an art, not a science). In yet other cases, a patent examiner will deliberately choose a reference that does not appear at first glance to be related at all, simply to show the applicant that his or her claims are too broad to be patented.

Another factor to consider: 5 of the 27 cases were follow-on applications (continuations, divisionals, or continuations-in-part) where the applicant cited all of the references from the parent case, some of which were originally cited by the patent examiner, and those references were cited again in the follow-on case. Thus, if anything, the “real” rate at which a patent examiner “picks up” applicant citations is probably 50% or lower.

For those who are interested, limited as the data set is, it is at least somewhat spread across the USPTO’s technology centers, although admittedly with a concentration in the mechanical and electromechanical arts:

  • Technology Center 1600: 2
  • Technology Center 1700: 3
  • Technology Center 2100: 1
  • Technology Center 2800: 8
  • Technology Center 3600: 5
  • Technology Center 3700: 8

For those not familiar with the technology centers, the definitions of what each technology center handles can be found here.

This post should not be considered legal advice as to whether or not a patentability search and opinion should be performed in any particular case. You should seek out professional advice on that topic from a qualified patent attorney or agent.

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