Prior Art Searching and its Effect on Patent Examination: A Guide for Inventors

The author just after finishing the 2023 Boston Marathon

Patent examination and prior art searching are two vitally important components of the patenting process.  As an inventor, it is essential to understand these processes to ensure that your patent application has the best chance of success.  Below, I explore the critical role of patent examination, how pre-filing prior art searching can affect examination, and provide tips for inventors looking to file a successful patent application.

What is Patent Examination?

Patent examination is the process by which a patent examiner reviews a patent application to determine whether it meets the requirements for patentability. These requirements include novelty, non-obviousness, and usefulness. During the examination process, the patent examiner will review the drawings and detailed description for technical compliance with the law.

The Examiner will also review the claims of the patent application and search for any prior art that may invalidate the claims.  Examiners can reject claims if there is prior art that is the same as or which is just similar to the claimed invention.  In other words, identity is not a requirement for a rejection.

Why is Patent Examination Important?

Patent examination is important because it ensures that only valid patents are granted.  A patent grants the owner exclusive rights to make, use, and sell the invention for a limited period.  These rights are valuable assets that can provide a competitive advantage and generate revenue for the patent owner. The US Patent and Trademark Office conducts patent examination to act as a gatekeeper for valid patents.

However, if a patent is granted for an invention that is not novel or non-obvious, it can create problems for the marketplace.  A patent owner who obtains a patent that should not have been granted can wield it to the detriment of the public.  The patent owner might sue innocent manufacturers or users.  This warps the competitive environment.  The Patent Office attempts to only grant patents on inventions that are claimed within the bounds of the prior art.  In other words, the scope of the issued patent does not overlap with something that is already in the public domain.

What is Prior Art Searching?

Writing patent claims is incredibly difficult.  I often liken it to walking into a completely darkened room and trying to guess where all the furniture is.  You’ll run into something, course correct, but probably still hit something else.  That’s what it is like to write and prosecute a patent claim without any pre-filing search.  Prior art searching, on the other hand, is like using a pen flashlight.  You might still run into something, but at least you can now see the outlines of the big furniture.  You can draft patent claims that avoid close prior art and hopefully avoid major rejections.

Prior art searching is the process of searching for information about existing inventions that may be relevant to a patent application. Prior art can include patents, patent applications, scientific articles, trade publications, and other sources of information that are publicly available – essentially anything public before your patent application’s filing date. The purpose of prior art searching is to identify any existing inventions that may be similar to the invention being patented and to ensure that the patent application meets the requirements for novelty and non-obviousness.

Why is Prior Art Searching Important?

Prior art searching helps inventors identify potential obstacles to obtaining a patent.  If prior art is found that is similar to the invention being patented, it may be necessary to adjust the claims of the patent application or reconsider whether the invention is truly novel or non-obvious.  By identifying potential obstacles early in the process, inventors can avoid costly mistakes and increase their chances of success.

Moreover, patent applications are expensive and take years to prosecute.  A prior art search can inform an inventor of the likely scope – and thus the likely value – of a patent before it is filed.  Thus, a prior art search can help an inventor decide whether the potential patent protection is worth all the time, money, and risk required to obtain it.

Tips for Successful Patent Examination

  1. Work with an Experienced Patent Attorney – Working with an experienced patent attorney can help ensure that your patent application is prepared correctly and meets all the requirements for patentability. An experienced patent attorney can also help conduct a thorough prior art search and respond to any objections raised by the patent examiner during the examination process.  A good attorney may even dissuade you from filing a patent application when no protection can be sought. There is no single more important tip than working with a good, competent attorney who you like.
  2. Conduct a Thorough Prior Art Search – A thorough prior art search is critical to identifying potential obstacles to obtaining a patent.  Inventors should work with their patent attorney to conduct a comprehensive search of all relevant sources of prior art.  With this, the inventor and attorney can then decide whether and how to construct a patent strategy.
  3. Focus on Novelty and Non-Obviousness – Novelty and non-obviousness are key requirements for patentability.  Inventors should ensure that their invention is truly novel and non-obvious compared to existing inventions before filing a patent application.  If you can’t identify the point of novelty of your invention, you should ask yourself why you are filing a patent application.
  4. Draft Claims Carefully – The claims of a patent application define the scope of the patent protection being sought.  Inventors can prepare mock claims, but should rely on their patent attorney to draft claims carefully.  The claims must accurately describe the desired breadth of protection and cover all aspects of the invention that the inventor wishes to protect.
  5. Evaluate your Patent Examiner – Some Examiners prefer to work closely with attorneys and inventors.  These Examiners are happy to grant formal and informal interviews and can be huge assets in the pursuit of a patent.  Some Examiners would rather review proposals on paper only.  Learn about your Examiner and act accordingly.
  6. Respond Effectively to Objections and Rejections – If the Patent Examiner raises issues during the examination process, it’s important to respond promptly and thoroughly to address any concerns.  But make sure that the response is concise and directed to the issue.  Long, wordy responses may not help.  They may even hurt.  When prosecuting an application, the words you write can later be used in an invalidation proceeding against the patent.  Working with an experienced patent attorney can help ensure that rejections are addressed effectively.


Patent examination and prior art searching are critical components of the patent application process.  While you can – and should – lean on your patent attorney for detailed explanation of prior art searching and the examination process, you would still also be well advised to understand these processes yourself at least a basic level.  This will aid in your discussions with your attorney and your ability to convey meaningful information and answers to him or her when asked.  Working with an experienced patent attorney will help ensure that your patent application meets all the requirements for patentability.  By conducting a thorough prior art search, focusing on novelty and non-obviousness, and responding promptly to objections, you can increase your chance of success in obtaining a patent for your invention.

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