Intellectual Property Directions

Quick – look behind you – run!!!

Everybody’s been warning you to watch out for “first-to-file” ( FTF) but you should be more worried about “Post-Grant Review” (PGR). Conceptually, PGR is a good way to improve patent quality. It gives third parties (not the PTO or patent holder) the chance to present evidence that the patent should not have been issued (e.g., was already in the public domain, is obvious, etc) during a defined time window AFTER the patent has been issued.

I pointed out last month, I don’t think small entities are necessarily at a disadvantage under FTF and even if I’m wrong, the only time where there is a head-to-head foot race to the patent office is near simultaneous invention – when’s the last time you were part of an interference procedure?

PGR, if enacted here, would be similar to European “opposition” procedures. In both procedures people who don’t like your ISSUED patent can submit evidence that the patent should not have issued, at a cost much lower than going to court. For a large entity this cost is much more bearable than for a small entity and allows the large entity to force costs onto the small entity after the small entity has showed its cards (and spent its budget) during prosecution.

The large entity’s capability and inclination to try to crush smaller but annoying competitors post-grant was demonstrated to me when I was Vice-President of R&D at a small entity. Our main competitor, against whom we had been making progress, was a German multi-national. Not only did they file an opposition to our European patents but, when the written opinion came out in our favor, requested an oral hearing on the matter. Cost-wise this was actually a triple whammy for us since our patent attorney had to engage their European counterparts to represent us in the European actions.

Luckily we had the resources to fight (and win); otherwise we would have had to allow our European patents to go by the boards, having already spent considerably to get them issued.

Your best defense against getting stepped on is a good offense. Do your homework (prior art search) before you  file your application. Read and re-read your patent application before filing to make sure there are no potentially invalidating errors (like lack of a full written description or enabling description). Be careful about prematurely disclosing your invention specifics – particularly while courting that all-important first customer.

And if PGR doesn’t happen? Well, the above advice is the best way to make sure your patent remains valid if and when you ever need to enforce it or use it for licensing income.

You’re probably familiar with the old FRAM oil filter tag line – “you can pay me now or you can pay me [much more] later“. I say essentially the same thing to my clients when the topic of prior art searching comes up. Of course, as their Director of IP I usually am saying “We can invest in prior art searching now or pay an attorney a lot more later.”

If your invention is worth patenting, if it will add value to your company in a unique way, then by definition some competitor will want to use your invention, either by infringing (and hoping to invalidate your patent if you sue) or by asking for a re-examination to bring in new prior art that you didn’t find and/or the patent examiner didn’t consider. In either case you will spend a lot of money – orders of magnitude more money – explaining away prior art that you didn’t know existed than you would have spent finding it yourself before filing.

Karen Hazzah, in her All Things Pros blog writing about a re-examination case, makes the same point:

But non-patent literature is much more common in reexaminations, where the requester has reason to spend a lot of money on a literature search. That leaves a lot more room to argue about the “printed publication” requirement. And since an in-force patent is at stake, it’s not surprising that the patentee digs really deep with its arguments, bringing up facts like [the lack of] ISBN numbers and sales receipts.

In the particular re-examination, the “requester” (viz., competitor) found prior art in a college professor’s self-published, loose leaf, “textbook” that he had used in his teaching. He had distributed it to about 600 pupils over the years and mentioned it in publications. He sold copies to anyone who asked, based on seeing those publications.

The patentee grasped at straws, arguing that this prior art wasn’t a “printed publication” within the meaning of the law because of its informal nature and distribution channel . But nothing in the law says prior art has to be produced by a traditional book or magazine publisher or be bound in any particular fashion; nothing in the law says you have to be able to get it on Amazon.

The spirit of the law only requires that a document has been disseminated or otherwise made available – to the extent that someone interested and ordinarily skilled in the subject matter, can, with reasonable effort, “locate it and recognize and comprehend therefrom the essentials of the claimed invention without need of further research or experimentation.” In other words, a document is prior art if an interested party can reasonably get their hands on it.

This “textbook” is an extreme case, to be sure. What are the chances that you could find a similar, privately produced “textbook” that described your invention, given the 4000 colleges in the United States and the tens or hundreds of thousands of professors who have taught there? But as this case shows, if someone wants to invalidate your patent, they will spend the money to find the prior art.

If at all possible, you should pay for a prior art search… or you can pay me later!