Monday, December 5, 2011

Patentability Searching - Blind Filing: The Blind Leading the Blind

This patent committee appears to be in a hurry to file lots of applications without a patentability search. Why would they do this? I don't know all the reasons, but searching can be difficult and tedious. Some may seek to avoid this work. Others argue it saves money to not search. Others may want to avoid delay in filing. Others maintain it's the examiner's job and only the examiner's search counts. Hate to notice it, but some attorneys may prepare patent applications without a search because it is more profitable. Why eliminate "half your expensive filings" with not so expensive patentability searches? Whatever the reasons, it appears until it is legally required some won't search. 

However, many benefits arise from a patentability search before an patent application is prepared and filedThe search could filter out the invention that is not patentable. By identifying this fact at an early stage applicants would also save the cost of preparing, prosecuting, and maintaining a patent, which cannot be enforced in court. Judges don't like to eat a "rotten egg" and "cooking" it will not change that fact.

Second, let's assume the invention has some novel features but they are not clearly identified before preparing the patent application. The attorney will give equal treatment to all the details, which may short shrift what is truly innovative. The attorney will be also forced to provide a longer and more expensive application in an attempt to maximize protection on what is later found patentable. Further, whatever is described in the application that cannot be protected with claims is considered to be dedicated to the public. This means more information goes out about your company's technology with no real protection.

A thorough patentability search can also increase the probability that a patent will be found valid in litigation. In the past, annual data prepared by the US Patent and Trademark Office demonstrated that 75% of patents are held valid at trial when the closest prior art was considered earlier by the Examiner. If the litigants however find the closest prior art during the trial, the number of patents upheld as valid drops to below 50%.

Moreover, the battlefield has shifted in many ways from how to prepare valid patents to how to prepare patents which are literally infringed. Since Pennwalt in 1987 it is difficult to establish patent infringement under the doctrine of equivalents especially when facts of prosecution history estoppel exist. If you do find prior art that is closer than that found in the Examiner's search, you may avoid a prior art rejection that requires amending or canceling one or more claims. This helps to avoid prosecution history estoppel, where the claims must be narrowed or canceled to avoid reading on the prior art.

The pre-filing search can also streamline prosecution by assisting the examiner, lengthen the patent term, and identify equivalents for disclosure in the specification to support literal infringement of a means plus function clause. The equivalents can be used to help support broad claims that might be held invalid if based on only a single example.

The pre-filing search increases the chance of collecting a reasonable royalty for infringement of any patent claim that is substantially identical to a claim in the published patent application for the same reasons discussed under prosecution history estoppel.

It would reduce the PTO's backlog if applicants searched and honestly assessed if the invention is new and non-obvious over the prior art. In addition, the pre-filing search protects the integrity of the patent system and the public interest by ensuring that the most relevant information is before the examiner during examination.

Due to the Internet, it is always cost effective to search using keywords and/or classification of the prior art in the US. If one wants to spend more, the search can be extended into other major patent countries or regions such as the Europe, and Japan as well as PCT applications.

What is the prior art we are searching for? Prior art has an intricate definition, but can be viewed as technology in the same field as the invention or reasonably pertinent to the problem addressed by the invention. When does this technology qualify as prior art? Under current law, its technology prior to the date of invention. Under the America Invents Act, its technology (short of inventor disclosures) prior to the filing date of an application that cannot claim an effective filing date before March 16, 2013.

Searching should be the default, if not legal requirement, for all applicants. We are not in the job of getting a patent, but an effective patent that promotes the progress of the useful arts (technology). Although the examiner will conduct a patentability search, two searches are better than one, and all applicants have strong incentives to do a patentability search.

Copyright © 2011 Robert Moll. All rights reserved.