Prior art is generally all the information that was publicly available before the effective filing date of a patent application. Discovering and understanding the prior art is important because a patent cannot generally be obtained if the idea was already known in the public domain or previously offered for sale. An appreciation of the prior art can also be important for a company to avoid infringing on another company’s intellectual property rights.
Prior art publications can exist in many forms such as in patents, scientific publications, scholarly journals, trade journals, dissertations, books, or videos. Products previously offered for sale are also considered to be prior art. The appropriate breadth and depth of researching the prior art is affected by a company’s particular situation.
Based on a review of prior art search results, and comparison to patent claims already asserted against the client, or to be written for the client, the attorney may provide an opinion regarding validity or patentability. If an invalidity opinion can be reasonably relied upon, then it may reduce the client’s future risk of willful infringement of the asserted patent.
There are several types of prior art searches that seek to meet different client needs, the client’s budget, and search objectives. For example, patent searches include state of the art searches, prior art/novelty/patentability searches, freedom to operate investigations, opposition searches, and validity/invalidity searches.
State of the Art Search
A state-of-the-art search may consist of a survey of relevant documents published in a given technical field or fields, or of patents (or patent applications) filed by particular applicants. These searches may also include searches in non-patent literature, such as scientific articles, theses and dissertations, the press, and in product-related literature such as instruction manuals and promotional literature. The search may reveal many documents, may be analyzed in detail depending on the objectives of a particular search. A state-of-the-art search is typically intended to establish a general sense of the knowledge and information that is available to the public in a specific area of technology. When the results of state-of-the-art search are analyzed and organized, the client may obtain an understanding of the landscape of the field at issue in terms of patent coverage and other technical documentation. BHW attorneys have extensive experience in all aspects of this entire process.
Prior Art/Novelty/Patentability Search
A novelty search (sometimes also called a patentability search) is usually conducted prior to filing a patent application. Such a search is performed to determine the potential scope and future value of patent claim coverage because only the difference between the invention and the prior art may be claimed. The expected future value of patent claims is an important factor in deciding whether to move forward with a patent application. For example, although it may be expensive to file and prosecute a patent, investing a certain proportion of a patent budget to gain awareness of the prior art improves patent application quality by helping to ensure that the patent application is drafted with appropriate claim scope. By contrast, drafting patent claims without a good understanding of the prior art can result in the need for more claim amendments during the patent prosecution process, which can increase legal fees prior to allowance and also detrimentally reduce the range of equivalents afforded to the claims if they are later asserted in court.
Hence, novelty searches should usually be performed before filing a patent application. Although this is not required in the United States, it is important to determine whether an invention can be patented with claims of valuable scope, and to identify other patent applications or non-patent documents may be in the same area of endeavor as the inventor’s or client’s. If a patentability search is not performed before a patent application is filed, a drafter of patent claims may not have a good idea of what prior art may exist that would impact the proper scope of claims to present for examination in a patent application.
The majority of the key patent offices around the world carry out novelty searches as part of the examination work undertaken after a patent application has been filed. The object of this type of patent search is to compare one or more claims of a patent application against prior documents to determine whether the invention claimed in the patent application is novel and nonobvious. The result of such a search, after careful analysis of initial search results, should be a list of publications (including not only patents and patent applications but also other technical publications) which include prior art considered to be close to the claims being analyzed. BHW attorneys have decades of experience conducting such prior art searches, analyzing the results, comparing the results against proposed patent claims, and drafting or amending claims to distinguish them from the prior art.
Freedom to Operate Search
As a company develops new products in their technology space or moves forward into a different technological field, it can be prudent to assess the risks posed by other companies’ intellectual property. Avoiding patent infringement at the outset can be much less costly than defending against a lawsuit later. Though no accusation of patent infringement has yet been made, since the costs of patent infringement can be very high, a company may choose to perform a broader and/or deeper prior art search. Such a search is known as a “freedom-to-operate” search or patent “clearance” search, and it may justify a higher budget than a pre-filing patentability search.
A freedom to operate search typically aims to assess the risk that an existing or proposed product will be met with allegations of infringement of a third party’s patents. If significant risks are identified by the clearance search, then a client may decide to abandon the product, or to redesign features that may reduce or eliminate the risk, if possible. This is a normal part of the product design and innovation process. Depending on each particular situation, an alternative to product abandonment or feature re-design may be engaging in discussions with the parties holding patent rights to determine whether a license or other business arrangement may be practical. In certain situations, it may be important to monitor competitors closely, and this may include monitoring the patent application filings and claims of competitors.
Beyond simply performing the freedom-to-operate search, BHW attorneys may be asked to provide a non-infringement or invalidity opinion as to one or more particular patents identified in the search results. Reasonable reliance on such a legal opinion may reduce potential monetary damages should the subject patent later be asserted in an infringement case. BHW attorneys may also be asked to advise a client’s engineers in design-around efforts: efforts to modify the design a new or existing product to avoid the claims of a potentially infringed patent that was identified in the results of the freedom-to-operate search. BHW attorneys are very experienced in all aspects of this process, from initial concept ideas to patent applications and related searches, to freedom to operate searches, design around efforts, licensing negotiations, alternative dispute resolution (ADR), and litigation if necessary.
Litigation-Related Validity/Invalidity Searches
An invalidity search arises when a company is faced with accusations of infringing another’s patent or with demands to license another’s patent. In response, the company may assert that the asserted patent is not valid because the idea was publicly disclosed in the prior art or obvious over other similar ideas that were publicly disclosed in the prior art. Because the financial and business risks surrounding patent infringement can be very high, an invalidity search is typically comprehensive, seeking to discover every critical piece of prior art that may render an asserted patent invalid. An invalidity search is part of a comprehensive legal defense strategy that typically includes other defenses such as non-infringement, unenforceability (e.g. for inequitable conduct), and evidence that may limit the available monetary damages.
The aim of a litigation-related invalidity search is typically to identify prior art which may render one or more claims of a granted patent invalid (or, conversely, whether a patent would be likely to withstand such an invalidity search). An invalidity search attempts to locate evidence to demonstrate that a patent claim was granted incorrectly, either due to oversight in searching during the original patent application examination process or sometimes even due to intentional or negligent concealment of relevant prior art information by the applicant. An invalidity search may also be important to establish the strengths and weaknesses of a patent’s claims for purposes of licensing and/or acquisition negotiations.
A patent invalidity search is generally wide-ranging and extensive because the success of a patent infringement lawsuit may depend on its results. Moreover, newly developed documents and showings generally must be closer than, and not merely cumulative to, the prior art of record identified earlier by the applicant and by the patent examiner. Thus, a patent invalidity search is often an all-out attack on a target patent. The search includes not only the identification of the closest publications or other prior art references, but also extensive analysis of the results in collaboration with technical experts.
BHW attorneys are competent to perform prior art searches of appropriate scope and focus or, as appropriate, efficiently manage searching vendors to perform the searches to best meet a company’s needs and budget. More importantly, with our engineering and legal expertise, BHW attorneys are able to analyze the technical and legal implications of the prior art search results, and how that may affect a company’s best business or litigation strategy.