Home Insights Amplifying IP series – Unchartered waters: invention searching

Amplifying IP series – Unchartered waters: invention searching

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4  minute read
Date published
22 March 2024

Amplifying IP is a thought leadership series on best practice approaches to protecting and leveraging IP.

In this first article, Principal and Patent Attorney, Rob Wulff takes a deep dive into invention searching. In addition to highlighting the risks involved, he provides recommendations on how searching can help rather than hinder.

To search or not to search

One major reason invention searching is avoided at the outset, is the issue of punitive damages (in the US – ‘treble damages’). Punitive damages may be awarded where it is revealed (e.g. during discovery in a patent infringement trial) that the infringing party was already aware of the patent in suit, based on searches already conducted. We know several US attorneys that actively counsel their clients against invention searching for this very reason. However, the defence of ‘willful blindness’ may no longer provide any protection[1] (at least in the US).

Another case made against early searching, relates to the US Patent Office’s (USPTO) duty of disclosure requirements. Not searching, can help avoid the cumbersome task of reviewing prior art to prepare and submit an Information Disclosure Statement (IDS) at the USPTO. The IDS itself can later be reviewed by competitors. Also, not searching may avoid a claim of ‘inequitable conduct’ – when you find a patent but omit to disclose it.

In our experience, the key question patent owners should ask in any patenting exercise, is “How can I diminish risk?” Risks such as missing ‘obvious’ prior art early, as well as patent infringement. The benefits that flow from early, comprehensive invention searching can include minimising such risks, as well as scope determination and cost reduction. In our view, the advantages outweigh the risks posed by discovery.

Searching to alleviate patent pain points

We consistently hear client frustrations that that the patenting process is painful – outcomes are uncertain, it is relatively slow, and it can be expensive (that is, hard to quantify what it will cost at all). Our goal with clients is to de-risk uncertainty and to provide greater confidence in outcomes. To that end, the goal for initial searching is to anticipate and prevent adverse examination outcomes. That is, spend a little more time and resources up front in order to avoid bigger headaches (and more money) down the road.

For example, for one client we recently invested a lot of time and effort in searching before and during the first priority year. We were confident we had found the best prior art. During later examination in the US, China and Europe, no more relevant prior art surfaced and so we were able to secure protection in these key jurisdictions relatively easily. The upfront search work paid off.

This approach can lead to lower total costs and speedier prosecution. For example, just one round of patent prosecution for just one country, can add costs of $10-15k (and substantially delay prosecution). With a comprehensive understanding of the prior art, gained as part of the initial searches, prosecution is typically kept to one to two rounds at most.

Other critical questions that an initial invention search should seek to answer are “in light of the prior art, what patent scope will I likely get?”, and then “will this scope provide any commercial value?”

If the answer to this second question is “No”, we suggest clients consider abandoning the invention before drafting even starts balancing this decision against any marketing benefit or competitor block that a patent application might offer.

The pains you no longer need to suffer

Reinventing the wheel

Our attorneys tend to see institutional researchers search scientific publications but not commercial and patent literature. Some suggest[2] that approximately 30% of research projects ‘reinvent the wheel’. If a commercial or patent search had been performed, this reinvention is usually avoided. It can be especially painful if the research is some years advanced and/or has a commercial linkage.

Conversely, businesses often search commercial and patent literature but not scientific publications. We explore all relevant literature (i.e. searching patent, commercial and scientific sources) thereby stretching the search budget for our clients .

Snail-pace processing

A comprehensive understanding of prior art, empowers clients to confidently avail various mechanisms that speed up the patenting process (Patent Prosecution Highway, Fast-Track, PACE, request early/expeditious examination (at filing)). Even when the occasional ‘surprise’ piece of prior art later surfaces, frequently this can be dealt with using analogous thinking/arguments developed during the original comprehensive search analysis.

Cost creep

Dealing ‘late’ with highly relevant prior art across multiple patent offices can represent a 3-5 time multiple on filing costs. Well-constructed searches help reduce this both in budget and the number of examination rounds. Such searches can also help avoid nasty prior art ‘surprises’ years later during the patent journey.

Infringing third party rights

Many pre-filing searches are patentability searches i.e. has the idea been thought of before? In our experience, Freedom to Operate (FTO) research is often a late afterthought or not even considered. Where invention commercialisation is imminent or foreseeable, we recommend that the comprehensive search incorporates an FTO component.

Thinking forward

Even with the risks of discovery, spending some of the patent budget up front on an early, comprehensive search makes sense.  Not only can invention searching reduce risks, it can minimise, and in some instances neutralise pain points early on. If the answers don’t add up, consider early project abandonment and be wary of firms pushing you to patent!

[1] 1 see Motiva Patents, LLC v HTC Corp. https://www.lexology.com/library/detail.aspx?g=4b3f397c-f87e-43e1-aed8-9c5e3b9d08da

[2] see Total Rebuild, Inc. v. PHC Fluid Power, LLC https://www.finnegan.com/en/insights/blogs/prosecution-first/high-pressure-inequitable-conduct-plaintiff-loses-high-pressure-testing-systems-patent-to-inequitable-conduct-in-total-rebuild-inc-v-phc-fluid-power-llc.html