The Patentability Search
Not everyone wants to conduct a patentability search. Not every inventor, and not every practitioner!
For the inventor it is usually a hard pill to swallow; to learn in a patentability search that her invention is not patenable. This understandable feeling can lead to either not conducting a search at all or not conducting a thorough search herself. I think that often there is a subconcious process at hand.
However, drafting and filing a patent application without conducting any patentability search in my opinion means writing in the dark. How can you know how to describe and claim the invention such as to distinguish it from the surrounding technology? What if you don’t know enough about the surroundings? Moreover, searching is much cheaper than the drafting and filing. If something , a “killer”, is found in the patentability search, then there is a clear justification for the search. If not, then there are usually nevertheless technologies close enough to require careful consideration and learn from in drafting. This principle applies even if they are not close enough to the invention to preclude patentability.
Now you may think that all practitioners have the same position; however, that is not so. For one, I have seen too many cases where a case is handed over to us and no patentablility search was conducted before filing. Sometimes the client is insistent not to do a patentability search at this stage. For example, because she doesn’t have sufficient funds for both drafting & patent application filing and patentability search. Or she thinks she knows the field so well that she knows everything there is.
There are several reasons paractitioners can give against conducting a patentability search. “my workers have a very creative imagination” (yes, head of a big firm says); “I don’t want to bear responsibilty if I miss something” (yes, heard); any relevant reference needs to be submitted to the patent office so I would rather not know about it. Such references need to be sumitted to the USPTO, as an IDS, or to the ILPTO, the Israeli Patent and Trademark Office, for example. Yes I feel that way sometimes, but the answer isn’t to refrain from doing the patentability search.
I think that the best reasons for a practitioner to not do the patentability search are two: objectivity, i.e., the practitoner wants to enjoy the material benefits of drafting and filing. The benefits potentially bias her search. Another reason is the cost effectiventess of conducting patenability search in-house as compared to commisioning an external contractor. In my opinion the practitioner does no favours to her reputation by conducting a sub-standard patentability search. She should have an interest in finding relevant publications. Almost always a “killer” is not found anyway, and the usual case is that a way is found to continue despite the relevant publications. An external contractor, in addition to being often more cost-effective, often has access to databases and search engines that a patent attorney or IP lawyer do not have access to. For example, to
Therefore, the search company, such as New-tone (ניוטון) in Israel, may actually perform a more comprehensive search than the practitioner. However, such searches still need review and analysis by a practitioner. Another advantage of an in-house search is that the practitioner familiarizes herself with the invention during the search. The practitioner can apply this acquired knowledge during the drafting of the patent application.