A few days ago I posted this question to several invention-related LinkdeIn groups in the USA:
Can anyone tell me why USPTO tends to search only US patents for prior art? I do lots of patent searching for (mainly) UK inventors, and find it odd that USPTO examiners appear to take such a narrow approach. I can’t easily find an explanation for it, and it strikes me as a practice that must mislead many US inventors.
Prior art is prior art wherever it’s found, so there must be many US patentees who think they’ve got a sound patent when in fact there is abundant prior art in European, Japanese or other patents. Are US inventors being sold short, or am I missing something?
So far I’ve had one reply but no answer. Both the absence of answers and the question itself are starting to intrigue me.
But first, some background. I’ve been searching patents for years, using the superb Espacenet, the European Patent Office’s free patent search engine. Stick it in ‘Worldwide’ mode and it gives you search results from a database of over 70 million patents.
If you then look at official search reports, it’s clear that UK and European patent examiners also look globally for prior art. As you’d expect them to, because (as in my LinkedIn question) prior art is prior art irrespective of its nationality. If you’re in the UK and someone in Japan or Mexico has previously patented exactly your idea, your patent application is unlikely to succeed.
In the USA, things seem to be done differently, and US inventors may well be the losers.
The US equivalents of Espacenet (mainly USPTO’s own database, and Free Patents Online) seem to focus on searching only US patents. The newer Google Patents also only searches ‘more than 7 million US patents’. Fine – as long as you remember those 70 million patents stored on Espacenet. Many will be duplicates, but we’re still talking about a prior art pool several times larger than the one US inventors and examiners use.
In the USA, it’s as though the patents of other countries don’t count. This is reflected in USPTO search reports (the list of patents cited on the front page of published US patents). In most cases, these refer only to US patents, potentially missing many relevant non-US patents.
Why don’t US inventors kick up about this? Possibly because they don’t know enough about patents to work out that something is wrong.
So what is wrong?
First, a lot of patents probably get granted in the USA that wouldn’t be granted elsewhere. Examiners who search 70 million patents are likely to find more prior art than examiners who search ‘only’ seven million. This surely reduces the quality of US patents.
Second, that relative ease of getting a patent may encourage many US inventors to overvalue their inventions, and spend money and effort trying to persuade companies to license an idea that really isn’t much of a runner.
Third, it makes US inventors vulnerable to having their patents easily invalidated. This is most likely to happen when they’ve got a product on the market, and so have a lot to lose. All a challenger may need to do is show non-US prior art, and the US patent could be dead in the water – and possibly the product or licence along with it.
It almost seems as though the US patent system exists inside its own bubble, oblivious to the rest of the world. Perhaps it harks back to an era when the USA was the primary driver of the world’s innovation, but that happy state of affairs has been over for some time.
Or am I being thick, and getting it completely wrong? As I asked in my original LinkedIn question, am I missing something? I really would like to know, so if you’re a US inventor or IP expert, please feel free to comment!