You might have heard that a prior art search is required before you file your patent application. Some kind of search to find prior art that could get in the way of your patent application. Should be simple enough.
Or maybe you just want to sell a new product, and you’d like to know if that would infringe someone else’s IP rights. You don’t care about patents all that much, but you know they can cause a lot of headaches if someone thinks you’re an infringer. All else being equal, you’d prefer that your business avoids being sued.
Or let’s say you already received a cease and desist letter. Some jerk is alleging that your company infringed his patent rights. You’re pretty sure that patent shouldn’t have been granted in the first place. Is there a way to find out?
As it turns out, these are three different topics that require three different approaches.
Quick Overview of a Patent
For the purpose of this conversation, patents have three components:
1. Drawings or “Figures” – these are basically illustrations of the invention, but they can also show other features or related systems
2. Written Description – this is usually the bulk of the patent; it’s where the patent attorney describes the features of the invention, as well as any contextual information that’s helpful
3. Claims – these are contained in the numbered list at the back of the patent; they define the legal rights; if you make or sell what’s listed in the claims, you can be sued by the patent holder
The other two things to know are:
1. You can’t get a patent on something that was already invented. No, it does not matter if it was patented. If the thing existed before you came up with the idea yourself, then it’s “no patent for you!”
2. The patent owner can only sue you for what’s in his or her claims. Something may be shown in the drawings or discussed in the written description. However, your product doesn’t infringe unless it’s actually covered by the claims.
Question 1: Can I Get a Patent on This?
If you’ve got an invention and want to know the likelihood of obtaining a patent, then a Patentability Search is the right way to go.
First, you should know that the US Patent Office does *not* require you to have performed any type of searching before you file your patent application. Some law firms have a policy of requiring a patentability search before they prepare your application. However, this is just a precautionary measure and a way to get some insight into how best to craft the application to avoid the prior art.
That being said, a Patentability Search is relatively straightforward.
As mentioned above, all that matters here is whether someone else came up with your idea before you did. So, the search team will look through the Drawings and Written Descriptions of previous patents and patent applications in related technology areas to see if your invention was out there already.
The Claims essentially don’t matter for this analysis, because we’re just trying to see if the idea’s been described somewhere. In fact, it doesn’t even have to be in a patent. Any documentation or real-life product counts against you. So, the searchers will look for any evidence that your invention was known to the public, in any country, at any time before your filing date. Your patent attorney will then analyze the results and discuss them with you.
CAUTION: This will not be 100% guaranteed. None of the searches discussed here are guaranteed to be perfect, but patentability searches in particular have a major caveat. That caveat is this: patent applications are secret for 18 months. The government does not publish them, and there’s literally no way for the public to search those unpublished applications. However, since any application filed before yours will count as prior art, these unpublished applications still matter.
Question 2: Will I Be Sued if I Sell This Product?
If you’re concerned that you might be stepping on someone else’s patent rights, then a Freedom to Operate (FTO) Search is the way to go. These are also referred to as clearance searches or right to manufacture searches.
In this type of search, the search team – and especially your patent attorney – will need to look at the Claims of active patents. The question is no longer whether anyone ever invented this before. Now, it’s whether anyone has existing rights that can be asserted against you. As mentioned above, patent rights are defined by the Claims.
Patent claims can be complex and difficult to interpret. At the very least, they’re subject to a lot of counterintuitive rules. Accordingly, the search and analysis require a lot more work to complete. That means it costs more than a patentability search. However, you should always weigh that cost against the alternative, which is potentially being blindsided by a seven-figure lawsuit.
Question 3: Can I Invalidate This Other Guy’s Patent?
Whether you found something problematic in your FTO search, or you’ve had a patent asserted against you, one of the first questions will be “Can we just make this go away?”
Well, one way to move things in a positive direction is to find some prior art that would invalidate that other guy’s patent. As mentioned above, you can’t get a patent on something that existed before, and neither can anyone else.
Sometimes, patent examiners miss important prior art and grant patents that technically shouldn’t exist. We’re all human (for now), and there’s a lot of prior art out there. Searching isn’t easy, and the examiner has a limited amount of time. Granted patents are presumed to be valid, but they can be invalidated by finding good prior art that wasn’t considered.
That means you can pay for an Invalidity Search, and there’s a chance the search team will find something to help your case. If they find a perfect match (so-called “knockout art”), then you can go back to the other guy and say “hey, other guy, check this out – your patent is probably invalid, so please go away.”
This search is very similar to a Patentability Search, because it’s the same kind of analysis. The search team will look at Drawings and Written Descriptions of anything that was filed before the patent in question, in any country.
However, invalidity searches are more difficult than patentability searches, because now there’s a big list of patent claims to invalidate. If even one of those patent claims is valid, then the patent holder might still have something to attack you with. So, instead of the general question “is it likely I can get a patent on this general idea?” the question now is “can we find invalidating prior art against every single claim in this patent?”
How Do I Go About Any of These Searches?
The normal way to obtain any of these searches is through your patent attorney. He or she will employ a professional search firm to do the actual searching, and the attorney will then perform a legal analysis of the results. Depending on the type of search and the situation you’re in, the next step could be a phone call, a written report, a formal written legal opinion, or all of the above.
As always, talk to your patent attorney or contact me if you’ve got any questions.
Photo © 2015 Dave Bourgeau
Blog Post © 2019 Kolitch Romano LLP
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DISCLAIMER: This article is intended to give the reader an overview of the topic, and does not constitute legal advice as to any particular fact situation. Facts matter, and every situation is different. In addition, laws and their interpretations change over time and the contents of this article may not reflect these changes. You are strongly advised to consult competent legal counsel regarding your particular situation.