Print

Please login or register.
1 Hour 1 Day 1 Week 1 Month Forever
Login with username, password and session length

[Hughferring]

Greetings, Im sure this simple question can be cleared up here.

Is it true that uspto reviewers are not responsible for searching out infringements on prior patents and that all infringements are settled in the 'marketplace' .....where it is then determined who's patent was first?

Trying to determine whether self searching for prior patents, issued or pending is adequate or whether paying our attorney 1500 is wise money spent.

....and as per this. Do attorneys have access to any search engines beyond the public uspto portal?

Thanks so much in advance.

Hughferring

[JimIvey]

Is it true that uspto reviewers are not responsible for searching out infringements on prior patents and that all infringements are settled in the 'marketplace' .....where it is then determined who's patent was first?

Yes, it's true that the USPTO does not consider infringement of any patent.

Whose patent is first generally doesn't matter.  The test is whether the scope of protection claimed by the patent application covers anything already known (as of filing or date of invention) or any obvious variation of anything known.  Thus, "prior art" is not limited to other patents but includes all publications.

Trying to determine whether self searching for prior patents, issued or pending is adequate or whether paying our attorney 1500 is wise money spent.

"Adequate" is a business decision, not a legal one.  You can never eliminate all risk.  However, a little bit of pre-filing analysis can do a lot to remove uncertainty in going forward.  Additional reductions of uncertainty follow a curve of diminishing returns, each little bit of uncertainty being smaller and smaller and coming at higher and higher prices. 

Somewhere along that line, you reach a point at which further reductions in uncertainty are not worth the incremental cost.  When you reach that point, you either proceed with the patent application or drop it and go do something else.  "Money well spent" is always a business decision, not a legal one.  A practitioner can help you fill in some of the variables in your cost-benefit analysis, but the ultimate decision is a business one.

....and as per this. Do attorneys have access to any search engines beyond the public uspto portal?

Yes.  Google.com.  Libraries.  Some will have access to professional databases of trade publications, such as IEEE.  Other patent offices around the world have search portals as well.

Regards.

[Hughferring]

thanks very much Jim for the feedback...

just to clarify.
perhaps 'infringement' is the wrong word in relation to my question.
does the uspto search for 'prior art' that may already describe the 'scope of protection' of the invention at the time of filing? ...and will they also be searching the 'other publications' you mention?
...and if not is this indeed settled in the courts when/ if someone spots infringement?

thanks again,

hughferring

[JimIvey]

perhaps 'infringement' is the wrong word in relation to my question.
does the uspto search for 'prior art' that may already describe the 'scope of protection' of the invention at the time of filing? ...and will they also be searching the 'other publications' you mention?

Yes, they do.  Well, they're supposed to, but they typically search primarily US patent/application databases.

...and if not is this indeed settled in the courts when/ if someone spots infringement?

During litigation, it's quite common for litigants to search well beyond what the typical examiner would search in an attempt to prove or disprove invalidity of one or more claims of a patent.

So, courts can declare a claim invalid even after the examiner has allowed the claim.  However, claims are presumed valid and courts are only supposed to invalidate a claim upon a clear showing of invalidity.

Regards.