Why Use a Patent Attorney Searcher?

In brief, a patent attorney will conduct a better Prior Art Search and will likely save the client money in the long run. Even if one were only to focus on cost, it is the total cost of the attorney's time and the searcher's time that matters.

Increase Efficiency by Avoiding Bifurcated Search & Analysis

One objective of a patent prior art search may be in preparation for drafting a legal opinion. Thus, a non-attorney searcher must communicate the search results to patent counsel to render that opinion. This handing-off of the baton, so to speak, is problematic. The searcher gains a keen insight into the state of the art during the relevant period.  Realistically, the searcher can convey only a small portion of this valuable insight to patent counsel, particularly when, as is increasingly the case, the prior art searcher and patent attorney are half a world apart.

The problem with this bifurcated approach to prior art searching and legal analysis is the lack of synergy between the patent searcher and patent counsel and that the patent attorney is starting cold in the middle of the project. If this is a $700/hour big firm partner, it is doubtful that commissioning a cheap prior art search from a searcher halfway across the world really saves the client money.

The Patent Search Field is Entirely Unregulated

Anyone can hang out a shingle and proclaim that they are a patent searcher.  Many patent searchers have solid technical degrees but are inexperienced at searching.  Pay attention to not only what a searcher tells you about his or her qualifications, but also what they fail to tell you.

When searchers stress that they have multiple technical degrees, they are trying to gloss over the fact that they are not a patent agent or patent attorney, or they would have told you that.  If they fail to tell you how long they have been employed as a searcher, then they likely are trying to hide the fact that they are relatively new to the field.  Pay attention to their search credentials, not their technical credentials.  New proposals would create a set of qualifications for patent searchers, long overdue in our opinion.

Intellectual Property represents the crown jewels of a company. Understanding the value of that IP requires an understanding of the patent landscape. Patents are among the most complex legal documents an attorney will ever come across. Should a nonattorney searcher with dubious search credentials draw that patent landscape?

Many Patent Searches Require Knowledge of Patent Law

For an infringement or freedom to operate search, an understanding of patent law is essential. The purpose of an infringement search is to locate in-force patents whose claims read on the subject features of the product or inventive concept to be introduced. Therefore, an infringement search requires the searching, reading, and interpreting of the claims of hundreds or thousands of potentially relevant in-force patents.

How is a non-attorney searcher expected to manage this task? Why are they even asked to try? Patent claim interpretation is the subject of numerous treatises and is enormously complex, yet the task of interpreting the claims of the hundreds or thousands of claims studied by the nonattorney searcher falls to someone with no legal training.

At PriorArtSearch.com, a U.S. Patent Attorney who has been conducting prior art searches for 20 years will conduct your search. In short, we provide services with a level of accountability and experience that most patent search firms cannot match.

Home