Since US patent law switched from a first-to-invent­ to first-to-file system, some patent applicants have been racing to the PTO, concerned that a competitor might first file an application potentially covering the same invention. In their haste, these patent applicants may file quickly-prepared provisional applications that adequately describe the invention but that fail to articulate why the invention is novel over the prior art or, still worse, fail to highlight the significance of the differences between the invention and the prior art. It is imperative to know the prior art before filing a patent application to avoid these pitfalls.

The recent case MPHJ Tech v. Ricoh (Fed. Cir. 2017)[16-1243-opinion-2-9-2017-11] is illustrative of the avoidable pitfalls a quickly-prepared provisional application can generate. The court instructs that a “provisional application can contribute to understanding the claims…[and that in] this case, it is the deletion from the [provisional]… that contributes understanding of the intended scope of the final application.” The patentee was unsuccessful in arguing for a narrow claim construction to avoid a prior art reference because its provisional patent application was drafted unnecessarily broadly, ostensibly without consideration of the prior art that the patentee was unable to overcome.

That fate, however, is avoidable.  Patent applicants can assess the novelty of their invention by searching the scope of their claims using the same databases that patent office examiners use. Because the examiner’s search results are presented during patent examination, applicants should consult these databases before filing applications.  Doing so provides the opportunity, before prosecution commences, to address key prior art:  by altering claim scope, reworking the invention to add distinguishing features, or gathering more data.  Patent searching with the assistance of a patent agent or attorney is often the best course of action for developing a patent strategy that proactively addresses complicated issues that may be encountered during prosecution.

Searching comes at a cost, ranging from $500 to several thousands of dollars to search, and at least as much again to review the results. These costs, however, are typically less than the one, if not two, rounds of prosecution that might be avoided by knowing the art in advance.  This savings is multiplied when prosecuting a given application in more than one country, where the same issues of novelty and nonobviousness/inventiveness will be examined.  By spending money up front searching and tailoring claims in view of the prior art, as opposed to in reaction to prior art cited against the application by an examiner, applicants often will more than offset the added up-front expense through decreased effort in prosecution. For example, when an applicant reacts to prior art identified by an examiner, the application may not have the appropriate level of detail to support claim amendments that may be required to overcome the prior art and still provide sufficient scope to embrace commercially valuable subject matter.

The time and money saved from fewer office actions can be used for more than just pre-filing searching.  In particular, the savings will often pay for accelerating examination.  In the US, such expedited examination is possible with a Track 1 filing, available for a USPTO fee of $2,000 (small entity).  To qualify, the application can have no more than four independent claims and thirty claims total, and no multiple-dependent claims. Examination of a Track 1 application takes about twelve months.  With sufficient up-front work searching and reviewing the prior art before filing, many Track 1 filings can proceed to allowance without generating an office action from the examiner.  This expedited review is valuable in terms of time and money saved. The pristine prosecution record adds further value because the file history is of limited use by potential infringers in defense of enforcement proceedings or in patent invalidity proceedings.

While applicants may not want to delay their provisional application filings to conduct patent searches, sophisticated patent applicants will incorporate time for searching into their patent preparation procedures.  At a minimum, applicants should conduct patent searching prior to filing their nonprovisional applications.  Because nonprovisionals, unlike provisional applications, are examined for patentability, applicants should develop a patentability story prior to filing that they are confident will surmount any prior art that the patent office might identify.