The Pitfalls of not obtaining a Patentability Search prior to Filing a Utility Patent Application

Due to the recession, many small companies and solo inventors are opting to file for utility patent applications without aide of a prior art search to provide some form of pre-filing patentability opinion.

While this can save initial costs, such prior art searches can be done for less than a $1,000 by a qualified searcher in Washington, D.C. Moreover, these searchers typically use the same search tools at the United States Patent & Trademark Office as an the examiner who will ultimately review the application.

Search results can be submitted during prosecution in the form of an Information Disclosure Statement (IDS). By having the patent examiner review these references during prosecution, the later issued patent is stronger and likely more enforceable during subsequent litigation. For example, a detailed IDS reviewed by an examiner can help create a valuable defense to a later claim of inequitable conduct during a patent infringement suit.