Using PCT and EU To Perform The Search

The reality is that cost is a key limiting factor in searching. Some technology areas in particular are notoriously expensive to search. Chemical abstracts searching, for example, can cost upwards of $10,000 for some projects. Even moderately complex chemical searches can cost more than an inventor is willing to pay.

In exceedingly difficult cases a searcher really needs the experience of someone who has dealt with the particular technology in question for many years, and has the critical information at his/her fingertips. Moreover, it would be best if the searcher also has substantially unlimited resources. Well, that describes patent examiners. But how can one get the patent office to conduct the search for the applicant?

It can be done. The secret is to do a preliminary search, draft a decent patent application, and then file that application through the U.S. receiving office of the PCT, while filing exactly the same application as a provisional with the USPTO. The examiner is supposed to issue a search report in about 16 months, but often does so in only 3 - 4 months. If the Specification appears to have been reasonably crafted in view of the art cited by the examiner, the patent attorney can just proceed to prosecute that application. If, however, the PCT examiner cites references that are really problematic, then the attorney can abandon the PCT application, rewrite the previously drafted application to take into account those references, and then file a new PCT application, claiming priority to the provisional. No one will ever know that there was a previous PCT application. In extremely important cases, I have even filed a second PCT application right off the bat - but in the WIPO receiving office rather than the U.S. receiving office. That parallel application is examined by the European Patent Office, which almost invariably identifies different prior art from that identified by the U.S. receiving office.

A little known service of the European Patent Office is that they will conduct a search on a given topic for a few thousand dollars, based upon a short disclosure of perhaps a paragraph or two. A top EPO official once assured me that such searches are given the same degree of care as patent applications, which means that the applicant is receiving a very high-level search for relatively little money. The results are usually returned within about 6 months. The EPO will do both standard searches (which are the same as the prior art searches performed on official European and international applications) and special searches (including "right to use" or "free exploitation searches").