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.