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                                                                  WINNING AN IPR PROCEEDING BEFORE IT IS EVEN FILED



There are many fundamentals in patent law. A clear, concise specification, enablement, distinct claims, etc., but there is nothing more fundamental than prior art, which is the basis of patent law. Unless the existence of prior art is known before the patent attorney puts pen to paper, the invention is at risk of being worthless –  a stack of papers that either cannot get through the examining process, or worse, a patent having issued claims that are declared invalid before the PTAB or in an infringement trial.


All too often, however, inventors think that a professionally performed prior art search is unnecessary.  They either have done their own searching, or believe that their invention is so unique that a search is not needed.  Either way, the outcome is often disheartening and needlessly expensive.  Inventors have an inherent bias towards their own inventions, and thus their searches tend to be narrow and/or inadequate, especially when it comes to finding prior art that may impact obviousness/inventive step.  When no search is performed, inventors don’t know what they don’t know. They may know the marketplace, but they are unaware of the 90+ percent of patents, published applications or non-patent literature for which there is no marketed product.  There is a need, therefore, for attorneys to educate their clients not only about the risks of undiscovered prior art, but more importantly, the benefit of uncovering prior art before the application is drafted.


Several key questions arise regarding any search, e.g., (i) where should the search be performed, (ii) what type of search is appropriate, (iii) when should the search be performed, and of course, (iv) who should perform it?  Today, many law firms and businesses have their prior art searches for new inventions performed in India in order to save money.  While such searchers are capable of performing computer word searches, they unfortunately do not understand the nuances of obviousness in American patent law.  More importantly, sending new technology overseas requires an export license under the Export Administration Regulations (EAR) promulgated by the Bureau of Industry and Security (BIS) at the Department of Commerce and codified at 15 CFR 730-734.  “If the invention was made in the United States, technical data in the form of a patent application, or in any form, can only be exported for purposes related to the preparation, filing or possible filing and prosecution of a foreign patent application only after compliance with the compliance with the EAR or following the appropriate USPTO foreign filing license procedure. See 37 CFR 5.11( C ) A foreign filing license from the USPTO does not authorize the exporting of subject matter abroad for the preparation of patent applications to be filed in the United States.” (See, Crouch, Dennis, “Outsourcing of Patent Preparation: PTO Says Beware” July 23, 2008).  In any event, the law firms and business who obtain searches from Indian firms are typically not first spending the time or money to obtain a foreign filing license.  Moreover, under the circumstances enumerated under 35 U.S.C. 181, sending of information outside of the US without an export license can result in an abandonment of the patent (35 U.S.C 182), or worse, a $10,000 fine and up to two years in prison under 35 U.S.C. 186.  Simply put, prior art searches for purposes of a U.S. patent application must be performed in the United States. 


Regarding the type of search to be performed, many service-providers are eager to perform prior art searches, but few truly know the patent law and the patent system well enough to perform a thorough search.  It is axiomatic that keyword searches, which are performed by many search firms, will only find prior art containing those key words.  But because patent attorneys are known for being their own lexicographers, a keyword search alone often will not provide a thorough or accurate search.  Obviously, a keyword search will not be useful if the keywords have little or no meaning in the context of the invention being searched, and thus it is not uncommon for keyword search to yield 50 or more patent publications, with few or even none being relevant to the invention at hand. 


In short, a keyword search by itself often may not uncover the most relevant prior art.  At a minimum, therefore, a class/subclass search should be performed in addition to searching keywords. The class/subclass search, at least for a patentability search, should include both the old and new classification systems of the USPTO, more commonly referred to as the CCLS and the CPC classification systems. For the most part, the USPTO has stopped adding patents to the old CCLS system, while the CPC system has been found wanting in its layout and usefulness by both patent searchers and examiners alike; hence users often cross reference the CCLS class/subclasses with the newer CPC classification system to find the newer prior art. Both systems can be used to find relevant prior art, although the more-thorough approach involves searching European and Asian databases as well.


Certain topics or scientific arts require searching well beyond the typical patent databases. A biotechnology search will usually require a review of the National Library of Medicine’s online database. Similarly, it can be advantageous to perform a bibliographic review of the IEEE when performing a search in the electronic arts. Simply searching Google also can turn up a vast amount of prior art.


There are multiple different types of prior art searches that can be performed, depending on the circumstances.  Some clients will request a “state-of-the-art search” in order to gain a better understanding of the overall landscape of patents and other prior art in a particular field where products are not yet patented or existing in the marketplace.  Such a search can allow them to make an informed decision whether it is commercially reasonable to spend time and money on research in the field, including whether inventions can be meaningfully protected.  Once an invention has been conceived, most patent filings should be preceded by at least a “patentability search” for prior art that either discloses or renders obvious the proposed invention. When a product is going to be marketed, either with or without a patent application, a “freedom-to-operate search” or “FTO search” should be conducted to locate any unexpired, third-party patents or pending applications having claims that may cover the product. In a typical FTO search, claims of unexpired patents and pending applications are reviewed to determine whether the envisaged product falls within already-patented claims or claims in pending, published applications.  Performing such a search early has the added benefit of allowing a manufacturer to “design around” third-party patents uncovered during the search by altering the potential product to avoid potential infringement problems. 

Lastly, when a problematic patent or patent application arises, e.g., in the context of an actual or potential infringement action, a “validity search” can be performed to locate prior art directed toward not only the third-party claims but also to the patentable idea itself.  Such a search is often wide ranging, and includes a search of US and foreign patents, literature and on-line publications, as well as searches of libraries and dissertations, etc.  Depending on the priority date of the involved patent or application, the availability of relevant art, and the commercial importance of the involved product, the time required to perform a good validity search is typically greater, as is the cost.


Concerning who should perform the search, the choices usually boil down to (i) patent lawyers who have expertise in both patent prosecution and performing prior art searches, and (ii) professional searchers who have technical backgrounds but who are not patent attorneys or registered patent agents. 

A patent attorney experienced in both patent prosecution and searching will offer the benefit of understanding the multiple ways in which an invention ultimately might be claimed and thus the different types of potentially relevant art that should be searched.  He/she also will know the concepts of patentability, including what types of prior art might be combined by the USPTO in order to make an assertion of obviousness.  Such a patent attorney typically also will understand the concepts of infringement, validity and the rules of claim construction that are critical for FTO and validity searches.  One additional benefit of having an experienced patent attorney perform a search is that communications with such attorneys are more likely to be protected by the attorney-client privilege and thus may be immune from discovery by an opposing party if litigation arises.

Patent searchers who have strong scientific backgrounds and preferably at least 20+ years of searching experience (preferably both before and after the advent of computer searching), also can produce credible and useful search reports.  It is noted, however, that only a handful of good “senior” patent searchers remain in the profession.  Depending on their backgrounds, professional searchers likely will understand the concept of patentability, potentially including what types of prior art might be combined by the USPTO in order to make an assertion of obviousness.  Such searchers, however, may not understand the different ways in which an invention might be claimed (and thus searched), and typically will not be trained on the concepts of infringement and validity, including the cannons of claim construction that can be central to FTO and validity searches.  And unlike the situation with attorney-performed searches, communications with such non-lawyer searchers may not be protected by the attorney-client privilege and thus may be discoverable by an opposing party if litigation arises.


In conclusion, prior art searches for new inventions must be performed in the United States, and preferably by either a patent attorney with years of searching experience or by a more senior, non-attorney searcher who has longevity in the field.


Jonathan Grant of Grant Patent Services has performed thousands of patent searches while also preparing and filing hundreds of patent and trademark applications. He may be reached at jgrant@grantpatents or by calling (301) 346-8714.Type your paragraph here.