WHERE DID WE GO WRONG? THE IMPORTANCE OF CONDUCTING PRIOR ART SEARCHES ON A REGULAR BASIS.

By Andrew Reed and James Ortega

Imagine your company has developed a great new product, and you have gone through the steps to protect your intellectual property in the product.  Now, a year down the road you are facing an accusation of infringement of a patent that you were not made aware of during the development of your product, but you would have found through even a short and straightforward prior art search performed by your patent attorney.                  

In the fast-paced development found in industry today, it is not uncommon for products to move from development to production in a matter of days or weeks, and not the months or years of previous generations.  However, this does create some issues in the realm of intellectual property, as many of these products never have even a short and straightforward prior art search conducted to find if there are any patents or patent applications that would be an issue for patentability or possible infringement.  In this article we discuss some of the basics of why companies and individuals should run not only an initial prior art search, but then also do periodic searches on their products, technology fields, and on their competitors.

What are Prior Art Searches?

Prior art searches are searches done on the subject matter (scope or technology area) of your idea or invention to discover “prior art,” that is, published documents involving that subject matter or technology field that predate your patent application.  These searches can give you a general knowledge of what others are doing or have done on the same subject matter or in the same technology area.  A prior art search can range from a patent attorney searching for a couple of hours to determine if there is anything exactly like your idea or invention, to the hiring of a professional search firm to find every relevant patent, patent applications, or publications discussing the subject matter of the idea or invention.  The level of searching is often dictated by the intellectual property strategy of the company or individual, and the cost of prior art searches varies among those levels.  If your patent is meant to be a defensive weapon, protecting against others using your idea or invention, then a short search can yield many of the best prior art references and can be supplemented at many points throughout the patent prosecution process.  However, if your patent is intended to be an offensive weapon, then a comprehensive and in-depth prior art search would likely be your best option. The reasoning behind these two options is discussed below.

The Importance of Prior Art Searches to Your Patents 

Prior art searches can be critical in both the patent preparation and prosecution phases, as well as on granted patents if there may be litigation involving such patents.  During the prosecution of a patent application, the inventors, patent attorney, and anyone involved with the application all have a duty to disclose any known material prior art to the U.S. Patent Office.  In practical terms, this means that if you as an inventor have conducted any searches, reviewed any products, or read any articles or other references that discuss the subject matter of the invention, these should be disclosed to the Patent Office.  These disclosures help to ensure that the invention does not already exist, and allow the examiner a more thorough understanding of the invention.  Additionally, if a patent attorney reviews any patents, applications or other references while preparing and developing the scope of coverage for the patent application on your invention, those references must be disclosed as well.  All of these disclosures are helpful because when your patent issues, these disclosures are printed on the face of the patent to inform any future parties what documents were reviewed during examination of the patent, or helped develop the invention or the scope of the patent claims.

Once you patent issues there comes with it a presumption of its validity.  The presumption of validity makes it more difficult to challenge your patent based on the prior art disclosed previously to the Patent Office during the patent prosecution stage, or even additional prior art that is deemed to be merely duplicative of the prior disclosed to the Patent Office.  Thus, the more relevant prior art that is provided during the patent prosecution stage, the stronger your patent will be.

Avoiding Willful Infringement 

In addition to the presumption of validity, the more material prior art that is provided during the prosecution stage of a patent application, the more likely an assertion of willful infringement can be overcome.  The prevention of a finding of willful infringement can come in two different forms.  First, a prior art search can establish if there are any patents or patent applications that cover your invention.  If any of these prior art references are of great concern, in addition to providing insight in how best to adjust the scope of your patent application to avoid such references, a non-infringement opinion can also be provided by your patent attorney if it is believe that the practice of your invention does not infringe those references.  Second, prior art searches can find patents and patent applications that are close but do not completely disclose or cover your idea.  Even prior art references that do not directly cover your idea or invention can help prevent a finding of willful infringement if your patent is issued after the Patent Office has already determined those prior art references do not cover your invention.

Freedom to Operate Searches

Another advantageous use for prior art searches is to determine the scope of the technical field in which you and your company are operating whether or not you have patents of your own.  Fundamentally, a patent grants one the right to exclude others from practicing the patented invention(s), but it does not necessarily grant one the right to practice their own invention(s).  For example, if your patented invention is an improvement over an existing, patented technology, then you may still require a patent license before conducting business within the coverage of that prior existing patent.  Thus, a prior art search may be used to identify the patented areas in a given technology field so that the risk of infringement may be reduced or eliminated.  Moreover, ongoing periodic prior art searches are also advantageous to determine if any new patent filings or granted patents now exist in areas previously free of patent protection.  By staying informed of any new patent filings in your relevant areas of technology, you can continually operate your business with a reduced risk of infringing any such patents.

Additional Uses for Prior Art Searches

Prior art searches may be conducted not only before or during prosecution of a patent application for the reasons discussed above, but also periodically even after your patent has issued.  In some cases, if prior art found during a prior art search after your patent issues raises a concern of its invalidity, a reissue application can be filed to disclose the newly found references to the Patent Office and allow an examiner to review your patent in light of these new references.  While the negative to this approach is a risk that the examiner may find the previous patent invalid because of the newly disclosed prior art, such a result could also prevent the expense associated with attempting to enforce a patent that would eventually have been found invalid.  However, if the reissue patent is granted after review of the newly discovered references, that reissue patent is now typically stronger than the original patent.

Prior art searches can also be used to identify potential infringers of your issued patent.  For example, prior art searches performed after your patent is issued can find potential infringers of your patent by identifying those trying to patent ideas that are very close to your patented idea.  These infringers or potential infringers can then be informed of your patent, which can give rise to a potential claim of willful patent infringement if they continue infringing your patent after such notification.

Prior art searches can also be utilized to determine the patent strategy of your competitors.  For example, a prior art search may show that a competitor always files patent applications in a certain country before filing international patent applications that are then eventually filed in the United States.  After discovering this strategy, a periodic prior art search of patent applications filed by the competitor in that initial country can give you an upper hand in knowing the focus of your competitor’s technology, as well as their ongoing patent strategy.

For all of the reasons discussed above, there are significant advantages for clients to have prior art searches performed before filing a patent application, during prosecution of patent applications, and even periodically after the issuing of your patent.  Moreover, prior art searches can be advantageously conducted even if you have no granted patents of your own in order to determine the scope of patent coverage in certain technology areas.  If you are interested in discussing the advantages of prior art searches or any of the other topics addressed in this article, please call or email us to see how we may be of assistance.

Hague Agreement Provides Smoother Path to International Design Protection

By James R. Gourley

Beginning on May 13, 2015, a new and potentially cost-effective process for obtaining design protection in multiple countries became available.  Under the Hague Agreement Concerning International Registrations of Industrial Designs (the “Hague Agreement”), a single application filed in a Hague Agreement contracting state can be used to obtain design protection in any other contracting state.  If an applicant desires protection in multiple contracting states, the benefits can be significant.

Before the Hague Agreement, applicants were generally required to hire local counsel in each and every country where design protection was desired.  Local counsel would prepare the design application and related documents according to local law and practice, and pay the filing fees associated with the registration in their local currency.  Although it was possible to claim priority to earlier filed applications in most countries under the Paris Convention, it was not possible to avoid paying local counsel to prepare and file the application.

Hague Agreement contracting states, including the United States, will set up a central receiving office that will allow applicants to file a single design application and pay the filing fees for all contracting states where protection is desired at the time of filing.  The filing fees are paid in the applicant’s local currency.

The United States Patent and Trademark Office published its final rules implementing the Hague Agreement on April 2, 2015, and published the forms for applicants to use on May 13, 2015.  U.S. applicants can now simultaneously seek U.S. design patent protection and register the design in any other Hague Agreement contracting state.  One other change for US applicants under the Hague Agreement is that US design patents that issue from applications filed on or after May 13, 2015 will get an extra year of term – 15 years from the issue date instead of 14 – regardless of whether the applicant seeks design protection outside the US.

As of April 15, 2015, a total of 65 countries had acceded to the Hague Agreement.  Some countries or regions of interest to many U.S. applicants include the European Union, most individual European countries, Japan and Korea.  Other countries expected to accede in the near future include Canada and China.

The main benefit to a Hague Convention filing is the potential for cost savings.  Although the United States substantively examines design applications, many other countries do not.  For example, a European design application is not examined before registration.  In such countries, local counsel fees for obtaining registration can almost certainly be avoided using Hague Agreement procedures potentially saving the applicant thousands of dollars.

The main challenge an applicant will face is making sure the Hague Agreement application complies with all of the rules and regulations that govern design applicants in each individual contracting state where protection is sought.  For example, many countries have different requirements on how many figures are required or allowed.  Also, some countries require a written description of characteristic features the design, whereas the U.S. does not.  Including this written description in a U.S. application might unduly restrict the design patent’s scope if it is not carefully drafted.  Furthermore, Hague Agreement filings will force applicants to decide which countries to pursue protection in at the time of filing, rather than six months after the first filing as allowed under the Paris Convention.

The Hague Agreement will require patent practitioners to think strategically about whether and how to best take advantage of its streamlined processes.  Timely decisions and careful application drafting can allow applicants to increase the geographic scope of design protection at significantly reduced cost.  As new countries come onboard and individual countries’ laws are harmonized, the potential savings could increase even more.