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I have an Invention ... Now What?
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   how useful is a non-patent literature search?
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   Author  Topic: how useful is a non-patent literature search?  (Read 1510 times)
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Re: how useful is a non-patent literature search?
« Reply #5 on: Jan 4th, 2007, 11:59am »
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on Jan 3rd, 2007, 3:43pm, timcd100 wrote:
I assumed that if your patent discloses every possible claim that could relate to your invention, and a claim is invalidated by litigation, then all other claims still hold. In such a case I don't see how it would be terribly important to find all prior art just to pointlessly beat a litigator to the punch, if all the other claims that are not found in prior art are still valid.

In short, your answer here is...knowledge is power.  GRS' reply applies well here
edit: More generally my question is, what is the benefit of having references in a patent that are the most relevant to your invention? I thought the only risk is that litigators or the examiner will find something that makes a claim obvious and I don't see how the references in your patent directly affect what they might do, because they'd do their own separate searches.

There are certainly instances where prior art is cited by a patent attorney/agent within the text of a patent.  There are experienced attorneys on this board who could likely provide their opinion of this based on past experience.  It would seem to me that by citing the prior art it allows the attorney/agent to argue why the present invention represents a patentable improvement over that prior art.  This can provide an opportunity to overcome potential objections before they may arise.
An examiner may also be more inclined to take a patent app more seriously if they see that the patenting party has done their homework.
« Last Edit: Jan 4th, 2007, 12:00pm by CriterionD » IP Logged
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