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What are the implications of insufficient prior art? Beyond vaguely being aware that it somehow reduces the chances of finally getting a patent grant, I am unclear as to what are the specific implications, and the implications on the examination process.

I have broken this down into a few questions.

  • Will the examiner typically perform a wider search of their own if they feel the attached prior art references are too little or too much outside the core prior art that would seem to match the topic(s) of the invention?

  • Will the USPTO examiner ask for more prior art?

  • Will it cause more iterations with the USPTO, that result in more payments to the USPTO or any significant potential for long waits.

  • Will the examiner simply deny the application on the basis of 'insufficient prior art'?

  • Will it somehow work against the people filing the patent application beyond the scope of the patent application consideration? such as, affecting other applications by the same people, or the right to submit more parallel applications.

  • Can it be considered a violation of any commitment made by the people filing the patent, or an invalidation of any statement (signed or otherwise) they need to make during the application and examination process?

Thanks!

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A patent practitioner not submitting prior art that they know of and that they think would be helpful to an examiner in making a rejection would be a huge deal. No one will risk their license and registration that way. –  George White Dec 21 '13 at 20:14
    
The volume of things that superficially show up in a search is not relevant. It only takes one good find to make a rejection that sticks and 100 near misses is not very different than 1 near miss. –  George White Dec 21 '13 at 20:59
    
@RobertTeslaIII It's very unclear here how the oath document relates to prior art search (or inclusion). Maybe you can edit that comment to make the linkage please. –  matt Dec 21 '13 at 22:27
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Again, there is no obligation to do any searching. A practitioner will only do a search or order a search from a professional searcher if the client specifies they want that done and is choosing to pay for a search. It can be strategic to do or not to do a search. The profession has moved in the direction of doing searches since a particular ruling a few years ago (Festo). –  George White Dec 21 '13 at 23:28
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@Robert Tesla II -You are way off on the oath: "The . . . application was made or authorized to be made by me. I believe that I am the original inventor or . . . joint inventor of a claimed invention in the application. I hereby acknowledge that any willful false statement made in this declaration is punishable under 18 U.S.C. 1001 . . . " So, only stated are: (1) that they authorized the application to be [initially] filed, (2) they believe they are the original inventor, and they understand that there is a penalty for lying about (1) and (2). –  George White Dec 22 '13 at 4:33
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1 Answer 1

In a normal examination (anything other than an Accelerated Examination) the applicant has no obligation to do any searching. They do have an obligation to inform the examiner of relevant things they do know of. The IDS form is to submit anything you happen know of that meets some relevance criteria.

In practice searches are usually done and the inventors are aware of other's work. Best practice is to list everything on an IDS that is at all close. The more things the examiner has in front of them the better from the applicant's point of view. It makes for a more solid patent.

The examiner's job is to find prior art.

If the examiner's first rejection is on marginal art that is easily knocked down by the applicant and then the examine digs deeper to find better art for a second rejection that delays the process and adds cost to the applicant.

EDIT: In the special case of an Accelerated Examination the applicant needs to follow a specific search protocol depending on the classification. Before the application gets to an examiner it is evaluated to see if it meets the rules for entry into the AE program. It can be denied entry to that program for insuficent searching, but not for insufficient finding of prior art. They can ask you to search, but how could anyone specify what you will find?

USPTO statistics from 2012 show about 40% of petitions for Acelerated Examination did not result in an accelerated examination.

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Well with the amount of patents in software, and the difficulty of covering every search phrase that traps all ways to describe software, I'd rather submit and let the patent office do the search. One can search 6 months day in and day out without covering their domain.. it can kill any sort of productivity whatsoever or cost a fortune to outsource –  matt Dec 21 '13 at 22:34
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Searches can be done by classification in addition to text searches. Searches are hard for any technology but probably harder for some software topics. The advantages of an inventor getting a search done include the possibility that you find killer prior art and can save your money by stoping then. Also you might see some aspects that are not new and steer your application to focus on aspects that have a better chance of being novel. –  George White Dec 21 '13 at 23:10
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