Effective prior art searching is a critical business need for law firms, large and small organizations, and even individual inventors and startup companies. Ordering the right search at the right time results in maximizing profit from your patent portfolio. Ordering the wrong search may result in more art (and thus higher search costs) than necessary or less art (and thus higher business risk) than necessary. For example, ordering a landscape search when you really only need a freedom-to-operate search could be more costly than you need. Further, ordering the search at the optimal time is essential to maximizing the benefits. For example, patent owners may miss out on the opportunity to amend weak claims if they find themselves subject to an inter partes review. Ordering an invalidity search before this risk presents greatly reduces chances of a potentially catastrophic end to their patents. Therefore, having a keen sense of which search to order and when to order the search greatly benefits your business.
Infringement/Clearance and Freedom-to-Operate Searches
Important searches for innovative businesses are infringement/clearance searches and freedom-to-operate searches. These searches are useful for an operating business interested in obtaining a list of patents that may be used to sue them. The business provides its search firm with a description of a product, method, or other patentable idea they plan to use in operation. The search firm will then identify patents with claim language that may be infringed upon by that concept.
The difference between these searches is the infringement/clearance search returns only active patents, whereas the freedom-to-operate search also returns expired patents in the public domain. If a patent is expired, it most likely will not be used to sue a business (although this issue is quite complicated and there are situations where this is not true which are beyond the scope of this article). Moreover, depending on the disclosure, an expired patent may indicate that subsequent patents are susceptible to invalidation. Thus, the infringement/clearance search is more cost effective but does not provide the assurance or advantages that a freedom-to-operate search provides.
The timing of infringement/clearance searches and freedom-to-operate searches is critical to maximizing the benefit of these searches. The best time depends on your current operations, goals and future plans. Some choose to order the search before beginning an operation. This timing is beneficial when you have a product or operation you expect to be exceptionally profitable and has been in the market by others, in some fashion, for some time.
For example, perhaps you have improved the design of a baseball bat. Bats have been for sale for a significantly long time and therefore may be subject to quite a few patents covering baseball bats. Moreover, you have reason to believe major league baseball teams will be interested in this product, so you expect it to be extremely profitable. Thus, you may choose to order an infringement/clearance search early. Alternatively, some choose to wait until a product has already been marketed and started earning profits. A business unsure of the success of a product may choose this route since an early search for an unprofitable product would be a waste of money. Waiting until after an operation has been exceptionally successful and is well known in the market may be too late since owners of patents you infringe likely already know of your existence and will require a much higher licensing fee to settle than they would have prior to the operation earning large profits.
Landscape and State of the Art Searches
A landscape or state of the art search is valuable to businesses interested in keeping their patent portfolio as comprehensive as the market allows. A landscape search provides an overall perspective of all prior art in a specific technology field. It often reveals “white space” or opportunities for investment through filing patent applications. This search may be used to direct research and development to areas of technology allowing for the most potential profit since it reveals whether room for filing patens exists in the specific technology.
Landscape searches should be conducted frequently to maximize their benefit. Because technology markets change rapidly, white space, or areas open for innovation, change often. To stay on top of these opportunities, businesses need to identify specific technologies on a regular basis and order landscape searches in these areas immediately to avoid losing the opportunity to a competitor. Moreover, iteratively updating the landscape searches could provide insight into how hot the area is with competitors and provide insight into how much your research and development department should focus on the specific field.
Innovative operations often consider patentability searches for specific inventions. This search returns prior art relevant to the novelty of an invention, which is a basic requirement at the patent office for patentability. If an invention is not patentable, then patent lawyer fees, application fees and other costs, often far exceeding $10,000, would be wasted. Some search firms provide two types of patentability searches: one that exhaustively searches U.S., foreign and nonpatent literature databases and a “knock-out” patentability search that only looks at high-level art on a more precise scale (i.e., “102” art). The knock-out patentability search is not as comprehensive as the exhaustive patentability search. Thus, the knock-out search is more cost effective, but also more risky since there may be less-precise art that the patent office may use to reject a patent application on an obviousness basis. The exhaustive patentability search is more likely to return this less-precise art.
The timing of a patentability search is particularly sensitive. If a patentability search is ordered too far in advance of filing a patent, then relevant prior art published after the search but before the filing could result in the patent being anticipated and thus the patent lawyer fees, filing fees, and other costs, often exceeding $10,000, being wasted. Ordering a patentability search too late could mean missing your window for filing you application. Therefore, closely monitoring your patentable ideas as they fit into your business plan is critical to timing a patentability search. Knowing whether the idea is patentable and when you plan to file is essential to maximizing the profitability of your research and development and adding value to your patent portfolio without wasting expenses on ultimately unpatentable subject matter.
Invalidity Searches for Patent Owners and Accused Infringers
An invalidity search seeks to invalidate one or more specific claims of an issued patent. This is accomplished by identifying one or more pieces of prior art that read on the claims, and was not considered by the examiner during prosecution. U.S., foreign, and NPL databases are exhaustively searched. Even patent owners should order an invalidity search prior to enforcing a patent to ascertain any weaknesses in the patent and whether amendments would be beneficial prior to an attempted invalidation at the Patent Trial and Appeal Board, when it may be too late for amendments. Moreover, defendants should order an invalidity search to evaluate whether to settle, file an invalidity proceeding at the patent office, or maintain litigation through invalidity phases in district court.
An invalidity search is valuable at many points in litigation. Patent owners should order invalidity searches on patents they intend to enforce prior to enforcement since waiting too long, such as until after an invalidity proceeding at the PTAB, may be too late to amend to correct weaknesses in the patents. Defendants in patent litigation benefit from early invalidity searches due to the insight into whether to settle due to it being a particularly strong patent, file an invalidity proceeding at the patent office, and/or maintain litigation through invalidity phases in district court. Further, recent developments in district court indicate that waiting too long to file an invalidity proceeding at the PTAB could result in not getting a district court stay of litigation, so early identification of invalidating prior art is essential. Thus, early invalidity searches are critical to litigation strategy for both patent owners and defendants.
As explained above, careful analysis of which search is most appropriate and when to order the search could significantly increase the profitability of searching. This article explains a few considerations important to deciding when to search and which search to order, but every organization has specific business needs.