Читать книгу Intellectual Property Law for Engineers, Scientists, and Entrepreneurs - Howard B. Rockman - Страница 127

The patent attorney you have contacted normally will not perform the search himself or herself, and will solicit the services of an experienced patent searcher. Therefore, the patent attorney must be able to furnish the searcher sufficiently accurate information regarding the description of the invention, its function, its advantages, objectives, and purpose; so that the searcher’s direction will be focused on the important features of the invention the inventor has determined provide novelty and non‐obviousness. Note also that the information about your invention furnished to the search associate by your patent attorney constitutes a confidential disclosure, and the confidentiality of that disclosure is protected by the searcher as the search is conducted. Thus, the disclosure of the invention to the search associate does not jeopardize any U.S. or foreign patent rights.

Since the subject matter of any search of the prior art is finite in quantity, no such search can be complete, in view of all the publicly available or generally known information relating to your invention which bears upon the questions of novelty and non‐obviousness. To conduct a search of all publicly known prior art worldwide would be cost prohibitive, if at all possible. Thus, do not be surprised if the Patent Examiner, or an accused infringer, uncovers prior art not uncovered by your search.

Any later‐appearing relevant prior art materials you become aware of during the examination of your patent application after the application is filed with the U.S. Patent & Trademark Office must be submitted to the Patent Examiner for consideration under Rule 56. Any relevant prior art you become aware of after your patent has issued may be submitted to the Patent Examiner for consideration in a reexamination proceeding or other post‐grant proceeding established by the AIA. These procedures are discussed at Sections 11.11 and 18.10, respectively. The advantage of a reexamination or post‐grant proceeding is to have the Patent Examiner consider the later‐found prior art, and to decide that the claims of your patent define novelty over the later‐found prior art.

Besides the material lodged in the U.S. Patent and Trademark Office database, other sources of information that constitute the prior art comprise foreign patents and published foreign patent applications, information in scientific journals, technical bulletins, product literature and brochures, safety data sheets, trade publications, press releases, product or service catalogs, and the myriad of information posted on the Internet. In the best of all possible worlds, it would be desirable to be able to evaluate patentability with reference to all existing relevant prior art; however, to amass this amount of information is a practical impossibility. Thus, the patent searcher usually looks only to U.S. patents and published U.S. patent applications, relevant scientific or technical published literature that is available, such as on the Internet, and foreign patents and published patent applications as available.

Where the invention is of significant importance to the inventor or the inventor’s employer, a search of foreign patents can be obtained on the websites of several foreign patent offices, such as https://worldwide.espacenet.com, http://www.wipo.int/patentscope/en, and https://patents.google.com. Espacenet is the online search website of the European Patent Office (EPO) with free access to over 100 million patent documents. Also, you or your patent attorney could contact search associates in Japan, China, Taiwan, Hong Kong, India, South Korea, and other areas of technical innovation throughout the world to conduct searches at their national patent offices. However, the extent of each search, as anything else, must be weighed against its cost and expected benefit. It is normally concluded that the patent search conducted on the database of the U.S. Patent & Trademark Office, plus an Internet search, provides prior art material that reliably may be extrapolated to the full content of the prior art to a certain degree and at a reasonable cost.