Importance Of Prior Art Searches Post-AIA

Patent Reforms

With America invents Act, companies that actively monitor patent issuances for infringements and competitive analysis as part of their IP management practices will have significant competitive advantage over those who don’t as they can essentially limit their competitors from getting a patent.

 Monitor Competitors’ Published Applications and Issued Patents

In this strategy ,companies in a  technological field can take part in the patent application process of their competitors.  Two ways in which these entities can do so are through the use of preissuance submissions and post-grant review./inter-partes review

Preissuance Submission

This new provision allows any third party to submit relevant art for consideration during the examination period.  In theory, companies might use this to halt the grant of a competitor’s patent by pre-emptively submitting  prior art, saving the examiner time and possibly avoiding a court case resulting in a cost effective strategy.

Post Grant Review & Inter-Partes Review

Companies may also want to take advantage of post-grant review of a competitor’s patents. Under these provisions of the AIA, a challenger has nine months to allege that  at least one issued claim is invalid on certain grounds .

Utilize Prioritized Examination for Relevant Patent Applications

Filing lawsuits and insisting that competitors cease infringing are much easier if such actions are based on an issued patent. Under the AIA, a small number of applications each year can be prosecuted using the prioritized examination process. An application with up to four independent claims and 30 total claims can be filed with a request for prioritized examination. Under this system, the USPTO will issue a first office action within four months of filing and reach a final disposition, such as a notice of allowance or a final rejection, within 12 months.


Supplemental Examination

Supplemental examination is a process which the patent owner can request in order to strengthen their patent. The new supplemental examination system does not require the applicant to admit any defect in their patent. This strategy therefore may be very useful if an applicant wishes to have a  prior art that was discovered after the issuance of the patent “listed on the patent’s face” in order to avoid later validity challenges. Supplemental examination also cures any defect of inequitable conduct during prosecution.

For an aggressive patent strategy or for asserting your patents, a supplemental examination request can be filed with a relevant prior art which almost precludes  the infringer to invalidate your patent on the basis of “inequitable conduct”.

For  Small Entities OR Inventors

Post-grant review and inter partes review will go before the Patent Trial and Appeal Board. This forum provides the advantages of quick resolution, as the challenges will be completed within a year and a half of challenging. Further, it is anticipated that costs will be much less than litigation.

With TTC, you are assured you have chosen the right vendor for your current and future IP management needs. Our prior art searches have benefited several Fortune 100 Companies and top IP Law Firms in the USA, Canada and Japan etc.