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[Joe M.]

Does an IP firm, or a patent attorney, expose itself to liability for conducting a patentability or pre-patent application prior art search? Maybe the better question is, if so, how much liability does it expose itself to?

I'm not talking about a firm doing its own search to locate art in order to prepare a freedom to operate opinion where the client later gets sued for infringement and then sues the firm for malpractice because of a faulty search, there are plenty of cases out there about that. I mean a search for an inventor to locate art relating to his invention so that he can then determine if it's feasible to prepare and file a patent application. I hear that firms generally farm these out to search services. But why?

Off the top of my head, here are a couple reasons why a firm might want to send this work out. First, there might be a concern about your hourly rate and the time it takes to conduct the search and prepare the report to the client. Second, there might be a concern about a patent attorney's ability to conduct a competent search, i.e., they might miss art. For the purposes of this question, let's assume the attorney is a competent and efficient searcher.

However, IMHO, I do not agree with always farming these searches out, for at least three reasons. First, there is literally no way for a searcher to locate and evaluate each and every piece of art, within economic limitations. All any searcher can do is narrow the search down by relevant class and keywords and then do their good faith best. This economic limitation applies to in-house searchers as well as outside search services. To account for this, your report to the client includes language pointing this out and noting that there might be relevant art out there that more closely relates to his invention. Please don't get me wrong here, I'm not suggesting a five minute google search and calling it good. I mean a good faith, best effort using several sources to cross-reference your results. I think (1) a good faith effort and (2) appropriate language in your report to the client would shield a firm from liability if the PTO located an art that prevented him from obtaining a patent, even an anticipatory reference.

Second, I don't know that you really escape liability by farming these searches out. For one thing, it's your name on the bottom of the report to the client, not the outside search service. Also, I have seen several cases where the firm was right there with the outside searcher due to privity. Many of those malpractice cases I saw included both the firm sending the report and the search service that conducted the search as defendants.

Third, I've seen poor search results from search services. There's no guarantee that the outside search service is going to do any better job than a competent patent attorney.

Before I start getting hate mail, please do not interpret this post as a knock on outside search services. I'm not at all suggesting every search service does poor work or that searches should never be farmed out. I have seen very competent search reports from outside search services before and I believe that they serve an important function. Many attorney's simply do not have the time to perform a search or their hourly rate prevents them from doing one. In those instances, it is great to have competent outside search services to rely on. My only point here is to determine if there really is liability in doing the search in house.

I have been unable to locate even a single case where a patent attorney was charged or convicted of malpractice because of a patentability or pre-patent search that they had done in-house. Does anyone know of any or is this whole "you better send that search out or you might get sued for malpractice" idea nothing more than an urban legend?

[Isaac]

I think you've omitted a source of liability.   A search inevitably requires a screening step in which patents are deemed not relevant and dropped from consideration.   Having an outside searcher perform the search eliminates the possibility of a charge of inequitable conduct when those dropped documents are not reported to the patent office.

[blakesq]

I think its hard for malpractice to arise when the patent attorney explains that there is NO GUARANTEE that a patent will ever issue, no matter how many or how thorough (sp?) a search may be.  Under current rules, one can simply file continuations, CIPs, or new apps to try to get a patent to issue.  Hence if a client does not want to pursue any of these steps after a final reject (by refusing to pay for these steps), I don't see how this rises to malpractice on the part of an attorney. 

[OMG IP]

I've never heard of farming out searches for liability purposes?  The applicant, which includes applicant rep/attorney, are on the hook for submitting anything known material to patentability.

We've strictly done it for economic purposes.  Ditto patent drafting.

[JimIvey]

I mean a search for an inventor to locate art relating to his invention so that he can then determine if it's feasible to prepare and file a patent application. I hear that firms generally farm these out to search services. But why?

First, I didn't read the original post beyond the quoted part above.  Just a disclaimer....

Second, I learned long ago that searching is an entirely different skill than writing and arguing patent applications.  Searching takes me a very long time and I can't charge my normal rate for it, so farming it out makes sense.  It probably takes me 3, 4, or more times as much time to search as a skilled searcher would take, and my rate is probably 3-4 times as high.  In addition, I know a former examiner (now patent attorney) who really loves searching and charges a different rate for it, so that just makes great sense.

So, the economics just really favor farming out (or assigning) searches to skilled searchers.

Lastly, all searches deserve hefty disclaimers.  The universe of relevant prior art is just so huge that no one can possibly search it all.  So, every search will necessarily be incomplete. 

Searching follows a curve of diminishing returns in which each increment of reduced uncertainty costs ever-increasing amounts.  You stop when further reductions in uncertainty are not worth the incremental costs.

Regards.

[patentsusa]

I've never heard of farming out searches for liability purposes?  The applicant, which includes applicant rep/attorney, are on the hook for submitting anything known material to patentability.

We've strictly done it for economic purposes.  Ditto patent drafting.

I agree, I farm out searches as a economic efficiency issue, not a liability reduction issue. 

[fb]

New question concerning this topic. After speaking to several attorneys, many were trying to motivate me to not search at all, or at least to minimize it. Is this because not-searching gives a greater chance of patent issuance, similar to not-explaining prior art in the descriiption (although continuing to list the art in the IDS)?

[MYK]

New question concerning this topic. After speaking to several attorneys, many were trying to motivate me to not search at all, or at least to minimize it. Is this because not-searching gives a greater chance of patent issuance, similar to not-explaining prior art in the descriiption (although continuing to list the art in the IDS)?

Maybe because of the difficulties with inequitable conduct vs. disclosure?  If you find anything relevant, you have to list it on your IDS.  But if you find something that you don't think is relevant, and so don't list it on an IDS, in any subsequent litigation that could leave you open to an inequitable conduct counterclaim.

CAFC has become rather ridiculous about inequitable conduct lately;  it used to be limited to willful efforts to hide things from the USPTO, but McKesson and other decisions have broadened the scope out to "anything under the sun" that might be even slightly suspicious.

[JimIvey]

Whether you ought to do a pre-filing search depends on a number of factors.

Suppose you knew there was some very close prior art out there.  Would you give up the entire project?  If so, a pre-filing search can save you a lot of money and effort.  Then, the question becomes how much to search.  More on that below.

On the other hand, if you've already decided to go forward with the project regardless of the search results, then a patent, regardless of how narrow, will be helpful and there's no need to search.

As for IDSes and quick allowances, it's not that hard to cite the results of your search in an IDS and I don't think a pre-filing search affects allowability much.

Once you decide to conduct a search, you have to decide how much to search.  The universe of applicable prior art is vast -- including anything ever published anywhere, more or less.  You could easily spend millions searching it all (hiring an army of searchers).  However, searching, even just a little, helps reduce uncertainty about the likelihood of getting a patent some day. 

If you were to chart (un)certainty vs. amount of searching, you'd see that the chart follows a curve of diminishing returns.  Spent a little on searching and you reduce uncertainty a lot.  However, incremental additional searching reduces uncertainty in smaller and smaller amounts.  You have to pick a point at which further reductions in uncertainty are not worth the additional expense.  And, that's entirely a business decision, not a legal one.

Regards.

[fb]

Well we are definitely moving forward with a US app, and I've been search google myself and finding nothing close at all. So being that foreign is going to be needed, I'll have a simple search done to help.

[horsechute]

Some search results are kind of interesting. Probably the most comprehensive I ever heard of was the global search to find prior art for Gordon Gould's laser application, where the library of congress obtained, through some kind of diplomatic channels, a Russian document by a Dr. Fabrikant, which resulted in a scaling back of the scope of Gould's patent once it issued. I think the idea of finding prior art for softbatch cookies in a Menonite cook book is kind of funny, too.

[af]

Perhaps I am the exception, but I do my own searches and find it very helpful.

I know a former examiner (now patent attorney) who really loves searching and charges a different rate for it, so that just makes great sense.

Essentially, that is what I do (I charge a flat fee). For the amount of time it takes me, I don't make very much money from doing the searches but there are several reasons why I would rather do the searches myself:

(1) The iterative process helps me clearly understand the boundaries of the invention quickly, more so than if I had had an outside firm doing the search.
(2) Many searchers are trained researchers rather than patent attorneys or agents. I think having a patent agent or attorney do the search can makes a difference when trying to ferret out relevant references. Especially references that could be used in a 103(a) rejection.
(3) I think there is a real advantage to interviewing the inventor before you do a search and having a clear idea of the core inventive concept.
(4) Doing my own searches helps me to understand the broader patent landscape of the subject area around the search; this helps in future searches for the same client.

Lastly, all searches deserve hefty disclaimers.  The universe of relevant prior art is just so huge that no one can possibly search it all.  So, every search will necessarily be incomplete. 

I completely agree. I have a full page disclaimer. I see the disclaimer as part client education. I take the opportunity to explain about the 18 month "blind spot" of unpublished patent applications, and that patentability searches are much less thorough than an invalidity search, and other limitations of the search process.

One last thing, I think if you are going to do your own searches I think it is pretty important to invest in the right tools and find a subscription based service that suits your needs and has the coverage suitable for your area of practice.

Anyway, that's my two cents
Alan

[af]

One more thought. I noticed that some search firms have offices (or mailing addresses) in the U.S. but actually do the searches in India, China, and Eastern Europe. It seems to me that sending a search to these companies violates information export laws. I was discussing this with a friend of mine the other day and she pointed to 37CFR5.11(c).

Alan

[Isaac]

One more thought. I noticed that some search firms have offices (or mailing addresses) in the U.S. but actually do the searches in India, China, and Eastern Europe. It seems to me that sending a search to these companies violates information export laws. I was discussing this with a friend of mine the other day and she pointed to 37CFR5.11(c).

Alan

37 CFR 5.11(c) only has consequences if there are export controls for the particular technology involved and the country at issue.  You probably don't an export license if you just want a patentability search done on your batting swing device made out of schedule 40 PVC pipe.