America Invents Act: the search for patent quality

Patent applicants need to know that the America Invents Act has changed the game of how and when to find prior art, say Andrea Walsh and Penelope Safioleas of Express Search.

Following full implementation of the first-inventor-to-file (FITF) system and the expanded definition of prior art provisions required under the America Invents Acts (AIA), more applicants understand the need for some type of patent search before filing a patent application. In our opinion however, not enough applicants realise the value of obtaining relevant prior art through comprehensive high-quality prior art research before plunging into the expensive patenting process. 

Essentially, the value of patent research is realised at the end and not at the beginning of the application process. The crucial point is that the use of worldwide patents and non-patent literature has become prudent legal strategy. Compelling evidence will illustrate that the time is now to upgrade standards of care in research to meet the patentability provisions in the US. 

We propose improved standards and three innovative research paradigms to locate relevant prior art anywhere in the world. Under these proposals, relevant prior art will have more strategic value than merely being a yardstick for patentability. Its preemptive use of strong novelty and non-obviousness references during prosecution allows the applicant to strategically craft claims around potential problematic prior art, thereby including that art in the prosecution file history. Further examples of how the use of relevant art throughout the patent application stages are provided.

Identification of all relevant prior art in the patent procurement process is the most potent change for any inventor(s) in securing and enforcing quality patents in the 21st century. The FITF system increased scrutiny of high-quality and low-quality patents in relation to relevant prior art. When granted patents were challenged under inter partes review, the majority of patents were invalidated by the challenger using a non-patent reference. The importance of locating all relevant prior art became significant, although comprehensive searching during patent prosecution did not change. 

Over the last few years patent laws have evolved to where patent quality is equivalent with patent validity. A patent search of US patents and provisional applications is no longer a way to save money; to determine patentability, you must have a comprehensive search conducted for all previous public disclosures, including foreign patents and printed publications. The value of proceeding with a patentability opinion and the filing of a provisional application based on US references that have not been vetted, hoping to secure an early filing date, should be reconsidered. 

If a problematic reference is found, or an offer to sell anywhere in the world is uncovered, the US patent cannot issue. If the patent did issue without the proper world search, its validity may well be challenged and the uncertainty of its commercial development may be too risky. Since the pro forma patent search strategies failed to provide the art needed to secure a defensible patent, we must become proactive and bring the knowledge and disclosure of good art to the US Patent and Trademark Office (USPTO) to reduce invalidity.

The obsolete way of using prior art in prosecution did not produce the quality patents needed. In old-school patent vernacular, you can pay the attorney now (when the patent grants), or you can pay him or her much later (invalidity challenge or litigation). To obtain the prior art we need to secure defensible, commercially viable patents for applicants regardless of budgets. 

Research strategies

Comprehensive research should be conducted during three stages pre-issuance: 

Pre-filing prior art research of worldwide patents and public disclosures to determine whether your invention is patentable in the US and to provide sufficient disclosure for writing well-crafted claims supported by your specification able to survive the new vetting process. You can confidently expect to be awarded your filing date.

"If the patent did issue without the proper world search, its validity may well be challenged and the uncertainty of its commercial development may be too risky."

Pre-grant validity search is done to assess all prior art considered by the patent examiner before the issuance of a patent. This type of search can determine whether significant prior art literature was overlooked during the patent application process. Any overlooked prior art may be sufficient to invalidate the patent if, had the examiner been aware of it, the patent would not have been issued. Also, validating the proposed claim language against known prior art allows the patent owner to strategically craft claims around known prior art, reducing the available pool of prior art for a future challenger.

Pre-final rejection research/notice of allowance search strategy is less than a supplemental examination to provide any knowledge and disclosure of good art to the USPTO that had not been previously disclosed. Every effort to expunge an allegation of duty of disclosure and to discourage a future challenge should be made.

In addition to a flat fee that is currently used for three types of comprehensive searches in the application stages discussed, an up-front fee based on the difficulty of finding the most relevant prior art will be charged. The applicant can decide to request one or all searches in any combination. If art is found that precludes the issuance of US filing, you need not search further. As a patent owner, a validity search plays a vital role in mitigating risk in patent portfolio management and in selecting appropriate patents to assert, and in deciding which claims would succeed a validity challenge. Knowing the relevant prior art provides leverage regarding the strength and value of the patent. 

We can no longer ignore that outdated research contributes to low-quality patents. We can and must make a recognisable change for patent quality in this century. 

Andrea Walsh is a research consultant at Express Search. She also works independently as an IP strategist in analysing patent-driven deals involving personalised medicine, genetic markers, and biotherapeutics. She specialises in distinguishing pre- and post-AIA issues, particularly those involving novelty and non-obviousness.

Penelope Safioleas specialises in industry trend analysis and product customisation at Express Search. She can be contacted at: projects@expresssearch.com