Why patent searches and prior art searches are a good idea

inspector
Thinking like a detective

Prior art searches: Before investing a lot of time, effort, and money in trying to patent a potential new invention, it is always good to spend at least a few hours doing patent searches to see if there is any prior art (earlier patent or non-patent publications) that might cause problems. As a rule of thumb, if you haven’t found any prior art that concerns you at least a bit, then you probably haven’t looked enough yet!

Why do this? Because eventually, skeptical USPTO examiners will be going through your patent application, looking for ways to reject on the basis that the application is either not novel or obvious in view of prior art.

Patent examination is an adversarial process. Patent examiners have, in effect, quotas which require them to initially reject most patent applications. It is a bit of a game, like tennis, where the examiner initially rejects by citing some combination of prior art.  The examiner then hits the ball back onto the applicant’s side of the court. The examiner is expecting the applicant to hit the ball back onto the examiner’s side of the court by submitting convincing arguments pointing out where the examiner was wrong. If the applicant can convincingly argue that the examiner is wrong, usually (often after a few additional volleys), the examiner allows the patent, and the applicant wins. But if the applicant cannot argue back convincingly, it is like dropping the ball or hitting the ball back out of bounds. The applicant loses, and that patent application is going nowhere.

The patent examiner typically starts by doing computer searches for prior art using search terms that the examiner thinks will work best. This computer search will come up with unexpected citations, which the examiner may in turn combine in unexpected ways to try to show that the invention is “obvious”. Because of the quota to initially reject almost everything, often these initial rejections are unreasonable. Unreasonable rejections are “good news” in disguise, because the applicant can then rebut these by reasonable arguments. It is the reasonable rejections that are the real “bad news”, because these are harder to argue against. So before putting a lot of time and money into an invention, it is a good idea to do at least some initial checking to see what the examiner (or for that matter, a competitor) might try to use against you later. This is the idea behind a “feasibility study” type prior art search.

Sometimes, particularly when the inventor or inventors are experts, the inventors themselves may decide that they are sufficiently familiar with their field so that the search-time expense/benefit ratio is low, and no additional prior art searches are worthwhile. Here, since the USPTO will do an independent search anyway, the only obligation that the inventors have is to inform USPTO of the most important prior art that they are aware of.

Other times, particularly when the inventor or inventors are working in an area that is new to them, prior art searches have a better search-time expense/benefit ratio. Here many good sources are available over the Internet, including Google, Google patents, Google Scholar, the USPTO patent database, the WIPO patent database, and the like.

Some common mistakes that inventors make is to underestimate the amount of prior art that a patent examiner can use against their invention. Although pretty much everyone understands the problem of prior patent applications by others, this is only part of the prior art problem.

For example, for the US, anything published more than a year ago can be used against your invention, including your own publications. This includes that “cool” YouTube video, that “cool” social media posting, or that research paper/thesis that you may have published last year. Foreign patent offices are even worse in this regard. Patent examiners know that often the inventor’s own worst enemy is the inventor’s own earlier publications. As a result, patent examiners often specifically search for the inventor’s own publications and internet postings to use against them.

Another problem that inventors sometimes have is that they are a bit too emotionally attached to their cool new idea.  This problem can result in sub-optimal prior art searches. The inventor may, perhaps subconsciously, avoid search strategies that may kill that shiny new idea.

Here, there are several advantages to having a patent attorney do a quick feasibility prior art search for you. One is that the patent attorney does prior art searches all the time. Another is that the patent attorney, being both less emotionally invested in the idea, and being expert in finding prior art, may have an easier time thinking of thorough search strategies. The third is that often doing the search helps the patent attorney understand variants of your idea better, which can translate into a better patent application.

For example, if something highly relevant comes up (and often something does come up), then the new idea can be better evaluated in the context of this new-found prior art. The scope of the initial idea may be altered or expanded, and a better patent application can result. Worst case, if it becomes clear that the idea has been done before, then time and money can be saved. Alternative ideas can be explored instead.

In conclusion, “feasibility study” type prior art searches are a good a way to get at least a rough estimate of the legal feasibility of a new idea. Although the prior art search may uncover what looks at a first glance to be a tough obstacle, often this initial obstacle may encourage further thinking and improvements to the initial idea, resulting in a better patent down the road.

Note that in addition to “feasibility study” type prior art searches, there are other types of patent searches called “freedom to operate” searches or opinions as well. These represent a different and more extensive type of search, and this is a different topic.

Provisional patent applications: thoughts and suggestions

Ducttape
Provisional patent applications are a bit like duct tape — useful, but temporary.

Provisional patent applications: US patent law allows inventors (applicants) to file informally written disclosures with the US patent office.  These informal disclosures, called “provisional patent applications” (often abbreviated as “provisional patents”, “provisional applications”, or even just “provisional”), represent an excellent opportunity to quickly and inexpensively start the process of obtaining a patent.

Provisional patents are not usually examined. Instead they are merely stored in the USPTO databases for a year.  They are then discarded, unless within that year, the inventor then files a regular utility patent application that references that provisional application.  If this is done, the USPTO keeps the provisional stored forever.

Provisional patents are often useful because later, during examination of the subsequent regular utility patent, the inventor can reference the provisional patent to overcome examiner rejections (e.g. overcome other patent’s priority dates, supply additional detail, and so on).

Regular patents have detailed requirements with respect to format, figures, and claims, and tend to be expensive to file.  By contrast provisional patents have almost no format requirements, and they are inexpensive to file.  Almost anything that can be put onto paper (e.g. a PDF format) can be filed as a provisional application.  As a result, provisional patent applications can be as simple as a single page photograph of a napkin sketch, or as complex a fully developed 100+ page formal patent application.  The USPTO will cheerfully accept either one of these.

The lack of format requirements can be very helpful.  Many a patent application has been saved by the fact that the inventor had earlier filed something, such as a research paper or user manual, essentially as-is, as a provisional.  Although such items would never be accepted as a regular utility patent application, informal provisional patent submissions can be a quick way to put important information on the record.

This is the good news.  The bad news is that many a patent application has been lost because the inventor first filed an inadequate provisional application, and then operated under a false sense of confidence that he or she was protected by that inadequate provisional application.

The dangers of an inadequate provisional application are both delayed and subtle.  At first everything is fine.  Then, typically about 1-3 years after the inadequate provisional has been filed, trouble can start.

For example, suppose that the USPTO examiner rejects on the basis that someone else has filed another non-provisional (regular utility) patent ahead of the applicant’s regular utility patent.  Under today’s rules, almost the only way to establish that the applicant invented first is to cite the earlier filed provisional patent, and state precisely which parts of the provisional application prove that the inventor was first.

If the examiner reviews the provisional and agrees, then the provisional has been successful and the inventor will hopefully go on to successfully get the patent.  But if the examiner reviews the provisional and says, “I don’t see the invention here”, then the provisional has likely failed, and the inventor may never be able to prove that he or she invented first.

Three different provisional strategies:

Personally, I think that it is useful to think about three different categories of provisional patents.  These categories are: 1) quickly file your existing write ups; 2) file a rough draft of a regular utility patent; and 3) file a complete utility patent, but do so as a provisional patent rather than as a regular utility patent.

Category 1:  quickly file your existing write ups.  These can be existing papers, PowerPoint presentations, handouts, whatever.  The argument in favor of this approach is that this is the quickest way of getting something on the official patent record.  This may also be a quick way of filing a lot of supplemental information.  Worst case, an improperly thought out provisional can later be abandoned.  My personal views are that this approach is better than nothing, but it is not without pitfalls.

Category 2:  file a rough draft of a regular utility patent.  Many provisional applications are filed by inventors and small companies operating on a limited budget.  Here the goal is to try to quickly file something that is relatively decent, but also try to save money while a new idea is being evaluated.  Here, as a compromise between cost and quality, one way to go is to produce a rough draft of a utility patent, following the standard utility patent format, which provides some important structure.  This approach tries to capture a good chunk of the value of a full patent, while keeping costs at about 50% of a standard patent, by focusing time on a few key draft claims, informal but adequate figures, and at least the most important technical aspects of the disclosure.

Category 3:  file a complete utility patent, but as a provisional application.  In this third type of situation, funding may not be an issue, but the inventor thinks there is a possibility that they will make additional improvements to the invention over the next year.  Here a complete and detailed utility patent can be written, but is instead filed as a provisional patent rather than a regular utility patent.  This provisional application can then be “aged” for up to a year.  If there are no changes, the original provisional can then simply be refiled as a full utility patent.  Otherwise the changes can be dialed in, and an updated version filed as the full utility patent.  An additional advantage of this Category 3 approach is that it can effectively increase the lifetime of the final patent by up to a year.

A few other nuances – if you are interested in foreign patent filings, realize that the 12 month foreign filing deadline starts ticking from the time you file your provisional application.  Thus the 12 month provisional expiration deadline, and the US and foreign patent filing deadlines, all fall on the same day.

Harming the economy with over-aggressive, haphazard Alice-based 101 rejections

madteaparty
Alice in Wonderland – Mad Tea Party

What to do about “Alice”? The US Supreme Court’s “Alice” decision has invited us all to a Mad Tea Party.  What fun! But, as previously discussed, if you like logical coherency, or even just want to keep from crashing the economy, there are a few problems with this decision.

Attorney Louis Hoffman, writing in ipwatchdog.com, sums up some of these recent”Alice” problems nicely.

Damaging the economy: As Louis points out, some of the most important areas of US technology are based on software, business methods, and biotechnology.  The USPTO has recently taken upon itself to reject many patents in this area.  However this loss of patent coverage can impede the economy by making investments difficult, and/or by driving inventions underground in the form of trade secrets.

http://www.ipwatchdog.com/2016/02/07/uspto-harms-over-aggressive-and-haphazard-application-of-alice/id=65810/

What about actual (written) patent law? Article I, Section 8, Clause 8 of the US Constitution has empowered Congress to:  “promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.

Congress has done so, and has determined under 35 USC 101 that:  “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.”

The US Supreme Court has given itself the power to override Congress, however.  In Alice, they chose to exercise this power.  In this regard, Attorney John Duffy writes in Scotusblog:  “The uncertain expansion of judge-made exceptions to patentability” points out some interesting implications of this decision.

If you want to know what’s important about this case, it’s right there: the Court’s acknowledgement that the judge-made “exclusionary principle” has the potential to “swallow all of patent law” because “all patents” are at some level based on the very things that can’t be patented under the judge-made doctrine.

Decisions, decisions: So the Alice decision, read too broadly, produces an unconstitutional result.  At some point, there will be likely corrective action.  However the practical question that some inventors, particularly business method inventors, have to address today is: file a patent and risk an “‘Alice” rejection, or don’t file a patent and be certain that the invention will become public domain?

Alice update — need true neutral party review

Need for impartial judges
Need for impartial judges

In my opinion, part of the “Alice” patent problem is that few true impartial (i.e. neutral) judges have really been involved yet.

Both the USPTO and Federal judges have at least a subconscious incentive to get complex patents off of their respective desks with a minimum of time and effort.  Why fill your head with complex matters — just say the patent is “abstract”, and the problem is gone.  Instant relief!  So perhaps there is an inherent conflict of interest built into the legal system in this regard.

So, as the Supreme Court itself warned, Alice will continue to swallow up more and more patent law until it finally reaches an opposing force.  Given our legal system, this opposing force may have to be formed by group of middle to large sized companies.  Here, any company that doesn’t depend on either advertising, copyrights, or non-innovative technology might be a potential candidate for such a group.

Perhaps some of the presently pending cases will eventually put some boundaries here.