Protecting Innovation: Unassisted Patent Searches – Risk or Reward?

Most entrepreneurs believe that their innovation will make a contribution to the marketplace or to society. Certainly, the vast majority also expect that there will be some financial reward that will flow from their hard work to justify the time and expense associated with obtaining a patent. But while most understand the value of patent protection, many are hesitant to pay a legal expert to thoroughly search for publications that are related to the science or technology underlying the invention before they file an application.

After all, why pay someone to review published literature when they are intimately familiar with what is known, understood and speculated about in their area of expertise? And yet, while it may seem counter-intuitive, getting the right legal counsel early can be a huge money-saver down the road. Before you embark on a DIY patent search and application, make sure you understand the risks.

What most new inventors and start-up companies fail to completely understand is that a patent application is a legal document, not a scientific or technological one. Patent applications are very different from a manuscript submitted for peer review or from a grant proposal submitted to obtain funding. Not only does the patent application have to meet certain legal requirements, but the words used to describe the invention and the claims must be carefully chosen because so many common words have acquired specific legal meanings from litigation and court decisions.  Most inventors are either not aware of this or have only a vague appreciation of it.

Beyond Jargon

Furthermore, most inventors tend to use the jargon common to their field of expertise to describe their inventions. This may hamper identifying existing publications relevant to the invention during a search and has a significant effect on the ease with which the patent application will progress.

When a patent application is filed, it is assigned to an Examiner with subject-matter expertise in the science or technology underlying the innovation. The first thing that the Examiner does is to search all publications that have a publication date that is up to one day earlier than the earliest date associated with the patent application. Those publications are called “prior art” because they were published prior to the date accorded the patent application and because they are in the same area of science/technology (i.e. art) as the subject matter of the patent application.

Even inventors comprehensively aware of what is going on in their area of science/technology can miss something that an Examiner will find. The Examiner is looking at the patent application as the legal document that it is and so is weighing the disclosure in the prior art against what the claims of the patent application state. The Examiner is also using technical terms in addition to jargon when searching.

As an example, a scientist who has invented a new method of conducting PCR (polymerase chain reaction) to be used for identifying new organisms in deep ocean thermal vents may not necessarily be aware of PCR methods associated with forensic applications used at crime scenes. The Examiner on the other hand has no bias as to how PCR is used or what the ultimate point of using PCR is (e.g. identifying a new organism), and so the publications that s/he searches could easily come up with a publication about which the scientist was totally unaware or which had been dismissed as unrelated because it was directed to something other than identifying new organisms.

Similarly, if a scientist uses the term “amplicon” in a patent application, the Examiner will likely search using that term, but also using the term “PCR product” (or vice versa) because both of these terms can describe the result of a PCR reaction.

Understanding the Value an Attorney Brings

This is where the value of hiring a professional legal expert comes in. Like the Examiner, an attorney demonstrates no particular bias about the invention and will use pertinent, yet neutral, terms when conducting the prior art search. Consequently, the searcher has a much higher probability of identifying prior art that an Examiner would consider relevant to the patent application – even if it does not immediately appear to be intimately related to the exact same end-product, approach, or implementation as that presented in the patent application.

There is a huge advantage in knowing what an Examiner might find when searching the prior art for publications related to the invention. Once one knows what an Examiner is likely to find, it is then possible to draft the patent application in such a way as to distinguish the invention from that prior art.

This has two main benefits. The first is that if the invention is successfully distinguished from the prior art, the Examiner will not base any rejections on that prior art. This will generally result in a much more directed and compact prosecution of the application.

And that leads to the second benefit – reduced patent prosecution costs. Generally speaking, the costs associated with having to point out to the Examiner the differences between the prior art and the claimed invention are far greater than doing a prior art search up-front so that those distinctions can be incorporated into the patent application.

Susan Gorman, Ph.D., Esq., is principal of Gorman IP Law, a law firm focused on helping companies leverage intellectual property assets to maintain a competitive advantage, enhance market share, plan for growth and better manage resources and expenses. Through a proprietary process, Gorman IP Law helps businesses build a formal IP strategic plan that defines your business goals, establishes benchmarks and allows you to better project costs. Dr. Gorman can be reached at susan.gorman@gormaniplaw.com.

The information contained herein has been prepared by Gorman IP Law, APC, for informational purposes only and is not legal advice.