Late Stage Patentability Searches – Increasing Business Value of a Patent

Typically, patentability searches are ordered prior to filing a patent application. They are useful for locating prior art relevant to the novelty of an invention. However, patentability searches ordered at a later stage are also advantageous. Ordering a patentability search closer to allowance increases the business value of the patent in several ways. First, it provides a simple list of references to cite in an information disclosure statement to ensure these references are on the face of the patent at issuance, thus weakening the value of these references in invalidity proceedings. Second, a late-stage patentability search provides an updated list of competitors potentially infringing the soon-to-be issued patent by listing similar applications filed after the application date of the invention subject to the search but only recently published. If the patent owner intends to enforce the patent, this list of competitors provides a starting point for pre-enforcement investigation. It is important to note that for this purpose, the search firm should not use the earliest priority date of the invention subject to search so that all relevant prior art is found. Third, a late-stage patentability search provides valuable insight into the strength of the patent by finding potentially invalidating prior art before issuance so that amendments or continuing applications may be filed to guard against that prior art. Thus, a patentability search conducted shortly before allowance can easily increase the value of the patent.

Commil v. Cisco and the Significance of High Quality Freedom to Operate and Invalidity Searches

Recently, the Supreme Court held “[a] defendant’s [incorrect] belief regarding patent validity is not a defense to an induced infringement claim.” Commil v. Cisco (May 26, 2015). Thus, freedom to operate and invalidity searches are more important than ever. A thorough freedom to operate search will uncover troublesome patents that may be asserted. A follow up invalidity search on those patents will ensure that any opinion formed as to invalidity will be correct. Because an incorrect belief as to invalidity is not a defense to an induced infringement claim, the freedom to operate and invalidity searches must be thorough and of high quality.

The SPSG team works closely with its clients to develop a search strategy to accomplish the clients’ specific goals. At the outset of every search, the client and a principal searcher discuss the scope of the search to develop these goals. If necessary, other members of the SPSG team also assigned to the project may participate in the discussion to facilitate a unified understanding of the search scope. When a client follows up a freedom to operate search with related searches, the client experiences consistent quality and cohesion between searches due to the individualized attention given to the client’s goals from search to search. This results in a higher likelihood of both uncovering troublesome patents and correctly identifying invalidating prior art while also saving time and expenses in performing these searches than would be seen without individualized attention to the client’s goals spanning multiple searches. Questions? Please feel free to contact Patent Search Associate Stacia Stokes, J.D. at stacia.stokes@shermanpatentsearch.com.

By: Stacia Stokes, J.D.
Patent Search Associate
stacia.stokes@shermanpatentsearch.com

The Significance of “Knock-out” Prior art in Proceedings at the PTAB

At SPSG, we understand that pursuing invalidity at the PTAB using a post-grant proceeding, such as Inter Partes review, covered business method patent review, or post grant review, is quite different from district court invalidity. The PTAB expects precise arguments showing invalidity or obviousness on a limited number of grounds. Often, PTAB proceedings are not instituted merely on the basis of too many grounds based on insufficient prior art. The PTAB favors concise arguments based on “knock-out” prior art that clearly invalidates or renders obvious the claims at issue in the subject patent.

SPSG employs sophisticated search techniques to provide you with only the best prior art. We do not dump a long list of references on our clients expecting them to sift through it to find the two or three best pieces of prior art to use in filing a post-grant proceeding at the PTAB. Moreover, we customize every search report to provide detailed notes summarizing the search as a whole and summaries of each reference with the most relevant portions emphasized. Finally, we can also provide a claim chart showing how the most relevant reference invalidates the challenged patent. For more information, please feel free to contact our offices at 626-432-7292.

By: Stacia Stokes, J.D.
Patent Search Associate

Patentability searches – why searching foreign patents and NPL is important

There are really only a relative handful of US-based IP research firms. It is alarming that many of them conduct US patent-only patentability searches. What about foreign patent literature? Non-patent literature? In some technology areas, foreign patents and/or NPL are very rich areas to examine. For example, PubMed (National Institutes of Health) is typically a very rich NPL database for many technologies such as medical devices. In terms of due diligence, one must consider foreign patents and NPL. Executing a US patent-only search, in terms of patentability, may result in poorly drafted claims or even an entire patent application that should not have been drafted in the first place. It is also noted that USPTO Examiners search some foreign (JPO, EPO, WIPO), and in some technology areas, NPL. Therefore, it doesn’t make sense to perform a pre-filing patentability search that does not include foreign patents and NPL, since the USPTO will cover these areas.

Also, per 35 U.S.C. 102, in part: “A person shall be entitled to a patent unless —
(a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent…”

Per above, it is clearly stated what constitutes prior art. Thus, it is vital that a patentability search include US and foreign patent literature, and non-patent literature.