Patent Searching

Patent searching is an industry unto itself that has evolved significantly in the last 20 years. In the recent past, when deciding whether to file an application, it was common to send invention disclosures to a searcher, or search firm. A list of patents would come back and the attorney would review the results. Searches typically took several weeks, if not more. This lock-step approach, and relatively slow pace, continues to this day in many firms. It has the advantage that the searcher can become skilled at searching while the attorney is then able to focus on review of potential claim scope and client counseling on whether there is a sufficient business case to warrant filing.

However, the world of patent searching is changing rapidly. The old model is being challenged in many ways, including with patent professionals handling their own searches using various tools, including AI-based searches, providing instantaneous results. There are also searching firms that focus on hard-to-find prior art searching to support patent attacks. Examiners and the USPTO are also evolving in the tools they use to search, and in the process of finding relevant prior art to support Office action rejections.

As this explosion of searching tools comes upon the profession, it is important to understand that the goals of patent searching can be very different depending on how those search results are to be used, which brings us to the focus of this post. Namely, that patent searching supporting drafting a patent application can be completely different than patent searching for examining (or attacking) an already drafted application/patent. Or at least it should be.

To be sure, in both cases it is important to know the relevant art. But the goal of searching after the application is drafted/filed is much more defined as the claims are written, and the specification is fixed. While there are always uncertainties in how an applicant might amend the application during prosecution, that variability pales in comparison to the latitude available when drafting an application. A skilled practitioner can take the “same” invention disclosure in many different directions. One might go so far to say that no two practitioners would ever draft the same application, even if both are given the same disclosure and same prior art. As such, the direction of searching when drafting an application can evolve. While the practitioner and inventor may have an initial idea based on their knowledge of the state of the art, that direction can change as references are uncovered. The changing direction may lead to new searching objectives, new disclosure, and so on.

This is one reason why integrating the searching of invention disclosures, evaluation of invention disclosure, and drafting of applications, can be particularly advantageous. It is also why a tool that is aimed at helping examiners find prior art might be less than ideal for a professional tasked with drafting a patent application. This is not to say that an applicant would not like to know what the examiner will find after the application is drafted; but rather that such a search may not even be possible in the initial evaluation stage of an invention disclosure. Often, the direction of a patent application can change significantly based on prior art initially identified in a search. After the application is drafted, it might be that the original prior art of concern is unlikely ever to be applied by an examiner or challenger - but that is only because the patent drafter found a way to take the application in a direction that left that reference practically irrelevant.

So, as you evaluate searching options and searching tools, make sure to understand how searches are used differently in different stages of the patent life cycle.