Greg Ahronian (Internet Patent News Service) emailed an article republished on this site suggesting that large Silicon Valley law firms are advising clients not to do any prior art searching. This is crazy advice in my opinion.
From time to time Patent Kinetics is asked to evaluate patent portfolios. The top three reasons why most US patents appear worthless are these:
- Failing to search for non-patent prior art. This is by far the most frequent failing. It is seldom, if ever, the case that there is no relevant art in scientific journals, the trade press, the general and business press, and publications from competitors and others in various market adjacency spaces.
- Failing to search for patent prior art. Assume that there is nothing new under the sun. Searching for relevant art can substantially strengthen the patent if and when issued.
- Relying on the patent examiners to search the prior art (a very few do reasonable first passes). This is a dangerous strategy since many examiners in most art units lack the time, resources, and incentives to do a really thorough job of searching the patent prior, art let alone the non-patent prior art.
Some believe that it is better to have crappy patents rather than no patents at all. On this theory, investors, competitors, potential partners, and acquirers can be fooled most of the time.
However, in the past several years, stakeholders have become much more concerned about patent quality, mainly because of big sums paid for certain large portfolios and because of some very visible patent litigation cases, especially those related to Consumer Electronics. At the same time, numerous vendors have arisen that provide some form of automated portfolio analytics that can be the basis of more sophisticated patent valuation judgments. Consequently, stakeholders are become more sophisticated about what makes patents valuable.
Inventors and patent owners are not required to search for relevant prior art (say certain of my patent lawyer friends). Inventors are, however, required to disclose to the Patent and Trademark Office any prior art that has come to their attention. That said, I believe that patent owners and inventors who are not doing everything reasonable to create patents that will stand up to close scrutiny by citing as much relevant prior art as possible are just throwing their money and time away.