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Differeng Views on the Net Value of Pre-Filing Searches

By William F. Heinze

On Friday, March 28, 2008, the IPO issued an urgent legislative alert to all U.S. members urging them to contact their two Senators to express opposition to mandatory ?applicant quality submissions? in patent reform bill S. 1145:

The bill requires nearly every patent applicant to (1) search the prior art and (2) submit a search report and analysis to the USPTO with its patent application. AQSs would result in expensive litigation over inequitable conduct charges and charges of inadequate searches and analyses.

However, according to "Seeking Cost-Effective Patents," by Professor Thomas G. Field, Jr.,

Inventors should not try to save money by omitting prior art searches before filing applications. Given the difficulty and cost of marketing new products, inventors must not assume, just because a product seems to be commercially unavailable, that it is novel. True, patent examiners do searches after applications are filed, but dollar-wise inventors do not pay attorney and filing fees to have examiners tell them what they could learn much more cheaply.

Other views on the need for pre-filing searches, include

• "Patent quality should start with a focus on high quality search.? ?-Ruud Peters, CEO of Philips Intellectual Property and Standards


• "Quality patents start with a quality search.? -- Mark Adler, Chief IP Counsel, Rohm and Haas Company


• ?The process of quality examination begins with the applicant. Too little or too much information both present serious challenges to examination quality, and both abuses are created solely by applicants. These abuses must be prevented if the system is to function properly for the benefit of the public.? -- USPTO Public Advisory Committee Report for 2007
  

Full post as published by I/P Updates on March 31, 2008 (boomark / email).