Shifting sands: rethinking prior art search
While patents have long been recognised as essential in prior art searching, their significance has increased due to new opportunities under the America Invents Act (AIA) to challenge both pending and recently granted patents.
As patent holders and challengers prepare for the effect these opportunities will have on innovation, R&D and patent filing strategies, one implication is certain: competitive patent intelligence has become essential.
Third parties now have the opportunity to affect how a competitor builds or changes its IP assets through pre and post-issuance patent challenges. This article addresses these changes by focusing on the necessity of monitoring and assessing competitors’ patents by rethinking the definition of prior art (PA) and PA searches.
Traditionally, PA and PA searches were assessed at distinct stages of a possible product: for example, to determine the patentability of a product before filing a patent or provisional application, to analyse whether commercialisation can be done without infringement, or to assess the validity of an issued patent.
However, the meaning and importance of PA have been altered under the patent reform act and it seems an opportune time to redefine the role of PA searching in competitive intelligence gathering and analysis.
‘New’ patentability and pre-issuance searches
On March 16, 2013, the US will become a ‘first to file’ system. As a result, attorneys may need to file earlier and more often.
It will also be important to update provisional filings when any improvements are made or when any new relevant prior art is uncovered by the applicant (see also third party pre-issuance submissions, below). In addition, the current statutory provisions for novelty and obviousness (35 USC §§102 and 103, respectively) will be replaced, resulting in an expanded definition for PA.
PA will include any prior patent, public use, printed publication, or sale of the claimed invention before the effective filing date. However, there will be a one-year grace period to file an application after disclosure that is attributable to the inventor directly or indirectly.
The scope of PA patentability searches must be expanded to include foreign patents, prior sale and prior use, including those dated less than a year before filing.
From September 16, 2012, AIA will allow third parties to submit relevant PA consisting of patents, published patent applications, or other printed publications, to the US Patent and Trademark Office (USPTO) for consideration and inclusion in the record of pending patent applications filed before or after this date.
This relevant PA will comprise pre-issuance submissions and must occur before the Notice of Allowance is issued, or by the later date of six months from an application’s publication date or the date of the first rejection issued by the examiner.
The new provision not only significantly expands the time period for submitting prior art documents that may be entered into a competitor’s pending application, it also expands what you can say about the documents (accompanying explanations and arguments).
Patent applicants and competitors will need to monitor prior art continuously during this expanded time period to exploit this provision to their respective advantage.
Post-issuance PA searches
AIA provides two new procedures for challenging granted patents: post-grant review (PGR) and inter partes review (IPR). PGR allows third parties to challenge the validity of a patent on any ground as an alternative to federal court litigation.
In order to take advantage of the new PGR proceeding within its nine-month window after grant, competitors within the same technological area should consider monitoring the emergence of competing published US patent applications and granted patents.
Within nine months of the grant of a patent, a competitor may challenge the patent with any PA, including actual sales or offers to sell, public uses, prior publications, lack of enablement, and inadequate written description. A PGR-PA search will be implicitly broader than a traditional validity search.
"It will also be important to update provisional filings when any improvements are made or when any new relevant prior art is uncovered by the applicant."
The PGR essentially corresponds to the US version of an ‘opposition’ proceeding and provides a significant avenue for third party competitors to attack patents in a forum that is much less expensive than a US federal court.
Additionally, the evidentiary standard which applies to a PGR is ‘preponderance of evidence’, in contrast to the higher ‘clear and convincing’ standard required in federal court litigation.
On September 16, 2012, IPR will replace inter partes re-examination proceedings. IPR challenges include PA based on patents and publications as well as written statements made by the owner of a patent in another lawsuit or at the USPTO regarding the scope of claims.
A petitioner cannot file the IPR until nine months from patent grant or after termination of a PGR, whichever is later. To initiate an IPR, a third party must establish a reasonable likelihood that it will prevail on at least one claim. Under 35 USC §257, a new supplemental examination procedure provides for post-issuance USPTO proceedings to correct errors or omissions during the prosecution of an application.
On September 16, 2012, patent owners are allowed to present information that was inadequately considered, not considered, or incorrect. This implies that a PA supplemental examination search will be routinely required by the patent owner once a Notice of Allowance issues.
The provisions of the AIA discussed above are very complex and its precise interpretation will most likely occur through legal holdings and opinions. However, it is certain that the definition and significance of PA have expanded, and as a consequence, attorneys and inventors need to rethink PA patent-searching strategies throughout the entire patent procurement and competitive intelligence processes.
