Arguably the most important part of a patent or patent application is the “claims.”  The claims define the metes and bounds of protection expressed in an issued patent or sought by a patent application.  The scope and validity of claims are determined in large part by information defined as “prior art” by statute.  Such prior art may include, for example, issued patents, printed publications, evidence of prior use or evidence of offers for sale, just to provide a few examples.  To be valid, claims must be “novel” and “nonobvious” in view of prior art.  In prosecuting a patent application, applicants typically seek claims that provide the broadest scope of protection but are still novel and non-obvious in view of prior art of record.  During examination of a patent application before the U.S. Patent and Trademark Office (USPTO), an examiner will evaluate claims in the patent application relative to prior art to determine whether the claims provide sufficient detail to be novel and nonobvious.  Prior art considered by an examiner in determining whether a claim is novel and nonobvious may include patents and printed publications disclosed by the applicant, and documents located in a search conducted by the examiner.  In the course of prosecution of a patent application, the applicant may have opportunities to amend the claims to provide additional details (e.g., narrowing claim scope) such that the examiner is satisfied that the claims are novel and nonobvious, and permitted to issue in a patent. 

The USPTO does not require applicants to perform any search before filing a patent application.  However, some patent applicants choose to conduct searches for locating information that may be characterized as prior art in advance of preparing and filing a patent application.  Information located in a prior art search performed by the applicant may assist the applicant in determining a likely available claim scope in view of prior art located in the prior art search.  Other patent applicants believe that they have sufficient knowledge of the state of the art to assess likely available claim scope without a prefiling search.  Having an understanding of a likely available claim scope may assist a party in determining whether filing a patent application is worth 1) the expense of filing and prosecuting the patent application and 2) forgoing trade secret protection (i.e., disclosure of technical details in a patent  or patent application that would not otherwise be publicly disclosed).

 Clients interested in commissioning a prior art search in advance of preparing a patent application should be aware that such a prior art search would entail cost in addition to costs to prepare and file a patent application.  These additional costs include fees paid to an outside firm to execute the search and for our firm to prepare  and forward instructions to the outside firm including a summary of features to be searched.  Parties interested in commissioning a prior art search should further understand that there are no guarantees that a search firm will locate the most relevant prior art, and that an examiner may cite documents during prosecution of a patent application that are more material or relevant than information uncovered in a prefiling search. 

-by Paul Nagy