The Art of Prior Art Searching

Prior to filing a patent application at the United States Patent and Trademark Office (“USPTO”), an applicant seeking patent protection for an invention should consider conducting a prior art search. Also known as a patentability search, a prior art search involves discovering and examining art, such as issued patents, published patent applications, and other published documents, that can affect the potential to obtain a patent on the invention. More exhaustive prior art searches may also include discovering and examining any prior uses or prior sales of technology related to the invention.

Although completing a prior art search is not required for filing a patent application, search results often provide the draftsperson of the patent application with valuable insight regarding the field of the invention. This insight may be used to develop more focused application claims, which may lead to more efficient prosecution of the application. Additionally, conducting a search may save an applicant a considerable amount of time and money if the results show that the invention would likely not satisfy the novelty or obviousness requirements set forth in 35 U.S.C. § 102 and § 103, respectively. Other beneficial reasons exist for performing a prior art search, including the potential to limit the impact of third party challenges by disclosing, during prosecution, art discovered within the prior art search.

Duty to Disclose

For a patent application, any material art found during a prior art search, in addition to any material art previously known, is required to be disclosed to the USPTO during prosecution of that application. An applicant is required to prosecute patent applications before the USPTO with candor, good faith, and honesty, and this duty includes disclosing material results of a prior art search.[1] As set forth in 37 C.F.R. § 1.56(a), “…[e]ach individual associated with the filing and prosecution of a patent application has a duty of candor and good faith in dealing with the Office, which includes a duty to disclose … all material known to the individual to be material to patentability.” Generally, all art found from a search is likely to be considered material, however, some references may be outliers that are not closely related to the invention and need not be submitted to the USPTO. It is common practice, however, to submit any prior art search results out of an abundance of caution to satisfy the duty to disclose.

Individuals subject to the duty to disclose include not only each inventor and any attorney, patent agent, or foreign agent involved in preparing or prosecuting the patent application, but also extends to any person who is “substantively involved in the preparation or prosecution of the application and who is associated with the inventor, with the assignee, or with anyone to whom there is an obligation to assign the application.”[2] In addition, the duty to disclose continues throughout the duration of prosecution and is “not limited to information which would render the claims unpatentable, but extends to any information ‘where there is a substantial likelihood that a reasonable examiner would consider it important in deciding whether to allow the application to issue as a patent.’”[3]

Despite the potential benefits associated with performing a prior art search, the duty to disclose can cause some applicants to avoid performing a prior art search prior to filing a patent application. This is because a patent may be rendered unenforceable if a court finds that an individual associated with the preparation and prosecution of the patent acted with intent to mislead or deceive the examiner by failing to disclose material information or submitting materially false information to the PTO during prosecution.[4] Thus, an applicant may be concerned that such a failure to disclose could result in one or more corresponding patents to be rendered unenforceable for inequitable conduct. Since there is no duty to search, some applicants avoiding searches altogether to reduce the risk of inequitable conduct.

Benefits of Inventors Performing the Search

The duty to disclose can complicate the decision of who should perform a prior art search. One option is for the inventor to perform the search, which can provide various benefits. For instance, as an expert in the field, the inventor is more likely to understand differences between related technology and the invention being searched. Further, the inventor will more easily understand technical materials. The inventor is also likely to know which publications may include the most closely related subject matter to that of the invention, and thus, where to look for relevant art. As such, some feel that inventors may be best suited to search for prior art.

In addition, requesting inventors to perform prior art searches helps to keep inventors up to date on competitor’s technology and activity in the field. Technology companies, for example, often release similar products, and having any technical advantage can prove very beneficial in terms of market share. Any and all information that an inventor can obtain of their competitors may be useful for creating such advantages.

Drawbacks of Inventors Performing the Search

However, discovering related technology may also influence the inventor in unwanted ways, and thus, there can be drawbacks of inventors performing the search. For example, information learned during a prior art search may be used or incorporated into future research and developments of the inventor, whether on purpose or indirectly, leading away from independent designs of the inventor. Generally, it is desirable for inventors to independently develop new technology rather than derive, or worse copy, designs from competitors. The inventor may not understand the possible legal consequences that may arise from copying aspects of competitor technology discovered during the search.

A derivation or copying of a competitor’s technology can lead to extreme penalties if a party is found to willfully infringe a competitor’s patents. In addition to the standard damages awarded for infringing the competitor’s patents, willful patent infringement can result in punitive damages as well. These punitive damages may be awarded when a party is engaged in deliberate copying, concealing infringing activity, or infringement where the party knows that it is infringing or knows it has only frivolous defenses.[5] A party found to have willfully infringed a patent can be ordered to pay up to treble damages if the owner of the patent can “show by clear and convincing evidence that the infringer acted despite an objectively high likelihood that its actions constituted infringement of a valid patent.”[6] Knowledge of patents discovered and examined during a prior art search by inventors, and continuing alleged infringement activity in view of such knowledge, can be used by patent owners as evidence to support allegations of willful infringement.

Other drawbacks for inventor-performed prior art searches exist as well. An inventor who learns of similar patented technology owned by competitors may attempt to design around such technology. Although done with good intent, a lack of legal training may result in implementing undesired design around techniques, or simply putting in place unneeded changes to existing designs.

Furthermore, an inventor may not fully understand the duty to disclose and may fail to properly meet the requirements set forth in 37 C.F.R. § 1.56. For instance, the inventor may discover material prior art, but not disclose it due to their belief that it is not close enough to their invention.[7] Additionally, the inventor may also underperform a prior art search due to a lack of experience (e.g., limiting the search to particular terms), or may not be able to make objective judgments as to whether reasonably close prior art renders filing of a patent application to the invention undesirable. An impartial searcher may provide a more objective judgment as to art that is material to patentability versus art that may be unrelated.

Lastly, it may simply be a better use of the inventor’s time to focus on their role of researching and developing new products, instead of on performing prior searches.

Who Else Could Perform the Search?

An applicant may prefer to have internal legal professionals perform the prior art search, rather than an inventor. This way, the duty to disclose is easier to follow, and other possible risks of notice and knowledge of prior art to the inventors may be limited. As managers of the intellectual property of the company, in-house attorneys of the applicant may use prior art searches to track potentially relevant art of competitors and direct the applicant’s patent portfolio according to discovered patents of competitors. At the same time, a trained attorney with legal experience is more likely than an inventor to know when and how to disclose search results properly to the USPTO.

As another possible option that limits the exposure of prior art to an inventor or in-house attorney, an applicant may rely on a third party, such as outside counsel or a specialized patent search firm, to perform the prior art search. By doing so, the applicant can limit its exposure to patents that are reviewed during searching.

A patent search firm brings experience and skills, including specialized search engines and patent data, that may lead to discovery of prior art that an applicant may otherwise fail to find. Additionally, searchers within a search firm often have experience searching in the particular field of an invention and may use a variety of terms that describe the desired invention to prevent missing possible art that may prove troublesome during prosecution. The search firm may then provide the search results for consideration by the patent draftsperson (e.g., outside counsel) or other parties of the applicant’s choosing. Alternatively, outside counsel may directly perform the search and consider the results to develop a focused strategy for preparing and prosecuting the patent application.

Some drawbacks of hiring a third party to perform the search include the additional cost and, in some instances, the search results may not reflect aspects of the invention for which an inventor or in-house attorney may have specialized knowledge. Thus, it is important that an inventor or patent draftsperson provide a full explanation of the invention that enables a third party to properly focus its search.

Conclusion

With these considerations in mind, choices of whether to perform a prior art search, and who should perform the search, can be more complicated than initially presumed. If a search is performed, it should be done in a way that balances patent application and filing decisions with the potential risks of failure to meet the duty to disclose.

[1] See MPEP § 2001.06.

[2] MPEP § 2001.01.

[3] McKesson Info. Solutions, Inc. v. Bridge Med., Inc., 487 F.3d 897, 922-23 (Fed. Cir. 2007).

[4] See Digital Control Inc. v. Charles Mach. Works, 437 F.3d 1309, 1313 (Fed. Cir. 2006).

[5] Knorr–Bremse Systeme Fuer Nutzfahrzeuge GmbH v. Dana Corp., 383 F.3d 1337, 1348-49 (Fed.Cir.2004) (en banc) (Dyk, J., concurring-in-part and dissenting-in-part).  

[6] In re Seagate Tech., LLC, 497 F.3d 1360, 1371 (Fed. Cir. 2007).

[7] See Bristol-Myers Squibb Co. v. Rhone-Poulenc Rorer, Inc., 326 F.3d 1226, 1237-38 (Fed. Cir. 2003) (holding that inventors engaged in inequitable conduct by failing to disclose own article relevant to enablement of the patent application). In another example, an inventor may discover art only related to one aspect of the invention, and believe that this art is not relevant because it does not relate to the invention as a whole. However, an examiner may find this art relevant if it can be combined with other art to in an assertion of obviousness.

© 2014 McDonnell Boehnen Hulbert & Berghoff LLP 

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