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   Practice doing prior art searches
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   Author  Topic: Practice doing prior art searches  (Read 2240 times)
tonyp
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Re: Practice doing prior art searches
« Reply #5 on: Oct 8th, 2006, 8:50pm »
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on Oct 8th, 2006, 7:12pm, smgsmc wrote:

 
Could you please clarify?  If I understand you correctly, patent agents/attorneys (or just attorneys?)  don't routinely do a prior art search for every application.  Is that correct?  I thought you would check to see whether the claimed invention is in fact novel...that is, whether someone else had already patented the idea before the client spends $$$ filing.  
 

 
In my experience, pre-filing prior art searches are rare.  Clients typically don't want to pay for them, especially clients that file fairly large numbers of applications.  Smaller clients, whose business is more likely to hinge on one big idea or a small portfolio, are more likely to want to do more diligence up front.
 
Another problem with extensive prior art searching is that everything you find creates disclosure liability under Rule 56.  If you don't look for it, you can't be accused of withholding it and having your patent held unenforceable due to inequitable conduct.  Thus, rather than run the risk, many folks avoid it entirely.
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patento
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Posts: 132
Re: Practice doing prior art searches
« Reply #6 on: Oct 8th, 2006, 11:49pm »
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see tonyp's response. that would have been my response.
 
There is another angel to it, if you do the search yourself, you open yourself to client's malpractice suit too if the search was not "perfect". I believe you pay higher insurance rates if you do substantial amount of searches.
 
If client insists on search, give the client a list of search firms, or tell the client upfront that the search will be conducted by an independent third party.
 
on Oct 8th, 2006, 7:12pm, smgsmc wrote:

 
Could you please clarify?  If I understand you correctly, patent agents/attorneys (or just attorneys?)  don't routinely do a prior art search for every application.  Is that correct?  I thought you would check to see whether the claimed invention is in fact novel...that is, whether someone else had already patented the idea before the client spends $$$ filing.  
 
You also mention farming out the search.  Is this standard procedure in the field?  That is, IP firms do not carry out their own searches?  I can see why an attorney may not want to, given high billable rates.  What about a patent agent?
 
Follow up question, then:  Is working for a search firm a way for a novice to get his foot in the door?   Thanks.

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Wiscagent
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Re: Practice doing prior art searches
« Reply #7 on: Oct 9th, 2006, 5:45am »
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tonyp wrote: "In my experience, pre-filing prior art searches are rare.  Clients typically don't want to pay for them, especially clients that file fairly large numbers of applications."
 
As a guy who worked on the inside, i.e. on the client side, we only rarely requested that outside counsel conduct a search for us.  Typically there would be a cursory search (USPTO - classification _ key words) conducted internally before a filing decision was made.  Also in many cases, the inventors were at the leading edge of development in the field and were knowledgable in the state of the art.
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Richard Tanzer
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smgsmc
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Re: Practice doing prior art searches
« Reply #8 on: Oct 9th, 2006, 9:43am »
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Thanks for the info.  Anyone have views on my other question?  Is working for a search firm one route to get your foot in the door?  Assuming there are more openings there.  What qualifications are needed?  Does a patent agent license count for any advantage?  Thanks again.
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Emporer Wears No Clothes
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Re: Practice doing prior art searches
« Reply #9 on: Oct 9th, 2006, 9:51am »
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There's a conflict issue not yet mentioned in this thread.
 
Genuine prior art searches, earnest reviews of the discovered references, and candid reports to the clients can result in canceled patent application projects. Why risk losing a project worth $10k or more in application drafting fees over a $2k or less search?
 
I would prefer to discuss this issue as an inherent conflict in our field. But I seem to be alone in acknowledging the conflict. Practitioners typically piously deny a conflict exists. But many times I've seen optimistic pictures painted by practitioners before naive clients in view of prior art that all but damns any patentability.
 
Telling the client the hard truth is often to the detriment of the practioner. A conflict exists. True, clients often don't want to hear the bad news and typically want to push forward into all but certain failure. But that doesn't relieve the practitioner of responsibilities to candidly advise on each situation. Typical law firm pecking orders stand in the way of that candid advice. An underling reviews the discovered art and reports to a boss ... and the boss filters the news that reaches the client. Can you guess which kind of news, good or bad, gets through the filter?
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