The Prior Art Gap, and How We Can Fix It.

“If we could further narrow this gap in prior art between examination and litigation, then the accuracy of the patent grant – and therefore, its reliability – would increase.”[1]

– Director Andrei Iancu

Here at SPSG, roughly 60% of our workload consists of invalidity/validity searching, both offensive and defensive.  We found Director Iancu’s remarks above regarding the stark difference between Examiner search, and litigation search (i.e. private sector invalidity searching) to be an overdue conversation, and an echo to what our team discusses every time we perform our renowned invalidity searches. 

According to IP Watchdog and Lex Machina: “…At least 84 percent of patents reaching a final written decision in a PTAB validity challenge are adjudicated to have at least one invalid claim (usually many more than one claim), with 69 percent having all claims invalid.[2]”  Thus, there is a clear need to improve patent grant reliability.

We have studied hundreds upon hundreds of file wrappers.  File wrapper inspection is typically step #1 when beginning to map an invalidity search strategy.  In particular, we will study the office actions and responses (if any), and the Examiner’s search history.  Examiner search histories are typically lackluster, for a variety of reasons (such as an incomplete search strategy).  Sometimes, there is surprisingly very little search history documented.  Regardless, this is where SPSG shines.  We find the 102b / close single reference 103.  We find the critical prior art completed missed by the Examiner.  We help change the tide for our client.  This is the true efficacy of SPSG’s Best Practices, and paints a clear picture of the stark difference between how we search, and how an Examiner searches. 

In short, an Examiner will search until they find a feasible 102/103.  Plain and simple.  Examiner’s are not rewarded differently whether they issue a strong 102b, a weak 103, or a first action allowance. 

To close the prior art gap, we must close the substantial gap between private sector searching and USPTO Examiner searching.  This difference is what Director Iancu is referencing above.  The only way to close this gap is to teach private sector search best practices to each art unit at the USPTO, and/or supplement the Examiner’s search via private sector searching.  This combination will not only potentially speed up prosecution, but also close the prior art gap and increase patent grant reliability.

 Another potential avenue is a new approach to pre-filing patentability searching, which we will detail in another article. More to come soon.

[1] https://www.uspto.gov/about-us/news-updates/remarks-director-andrei-iancu-us-chamber-commerce-patent-policy-conference

[2] http://www.ipwatchdog.com/2017/06/14/90-percent-patents-challenged-ptab-defective/id=8434