Intellectual Property Directions

If you’ve ever watched a patent application flow through the USPTO examination process and said “What the heck is going on? I know of some prior art that should wipe that application out ASAP.” Well, your time is coming. But be careful what you wish for!

Under the new America Invents Act, third parties – outsiders like you – get several new chances to muck up someone else’s patent and/or application. Of course, you may actually end up making that inventor’s patent stronger, so think twice before acting. There are actually three opportunities for non-inventors to interject themselves:

First, you can submit information to the patent office during the examination process. This new, pre-issuance submission process is limited to printed materials such as patents, published patent applications and other printed publications. What is new is that these submissions are accompanied by “concise” descriptions of their relevancy. Thus, rather than just dump prior art on the examiner and hope s/he will read and understand their significance, under this program you get to point out why they should block your competitor’s pending application.

• Can be anonymous
• Must be submitted within 6 month of application publication (as a practical matter)
• Effective 16-Sept-12 BUT applies to any pending application.

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!