Identifying Grounds for Patent Invalidity: 5 Prior Art Pitfalls

May 23, 2024
- Invalidation

In the complex world of intellectual property law, patent invalidity searches play a crucial role in determining the sustainability of a patent.

This process involves meticulously uncovering evidence that pre-dates the patent in question, known as prior art, which can prove that the invention was neither novel nor non-obvious at the time of its filing.

Such findings can significantly impact the outcome of patent litigation and licensing negotiations. However, the journey to identify robust grounds for patent invalidity is fraught with challenges.

One of the key hurdles in this endeavor is navigating the intricacies of prior art searches. Patent searchers must be vigilant and comprehensive in their approach, as over-reliance on specific types of prior art or narrow search criteria can lead to incomplete results.

Moreover, the landscape of prior art is vast and varied, encompassing not only patent literature but also non-patent literature (NPL), which can often hold critical pieces of information that patent databases may miss.

In this article, we delve into five common pitfalls encountered in the search for prior art that can be used to invalidate a patent. By understanding these pitfalls, patent professionals can enhance their search strategies, ensuring they uncover the most relevant and compelling prior art to challenge the validity of a patent effectively.

I) Over Reliance on 102(b) Prior Art

Under US Patent law, 102(b) prior art is often viewed as a vital resource for those challenging a patent’s validity. This is because 102(b) addresses exceptions to the general rule of 102(a), which states that a person is entitled to a patent unless:

The claimed invention was patented, in public use, on sale, described in a printed publication, or otherwise available to the public before the effective filing date of the claimed invention, OR
The claimed invention was described in a patent issued under section 151 (covering the issuance of a patent upon fee payment) or in a patent/patent application that names another inventor and was effectively filed before the effective filing date of the claimed invention.

The significance of 102(b) prior art lies in its capacity to anticipate the entire patent claim by:

Citing disclosures published more than one year before the effective filing date of the claimed invention, which were either:
- Made by the inventor, joint inventor, or another individual who obtained the subject matter directly or indirectly, OR
- Publicly disclosed by the inventor, joint inventor, or another individual who obtained the subject matter directly or indirectly.
Citing disclosures appearing in patents/patent applications where:

- The subject matter disclosed was obtained directly or indirectly from the inventor or joint inventor.
- Prior to filing, the subject matter had been disclosed by the inventor, joint inventor, or another individual who obtained the subject matter directly or indirectly, OR
- The subject matter disclosed, and the claimed invention were owned or assigned to the same person (before the effective filing date).

While 102(b) prior art references are highly valued because they are published before the target patent’s effective filing date and demonstrate a lack of novelty by disclosing all claim limitations, they are often the most challenging types of references to identify.

Therefore, it is crucial to broaden your search to include other legal provisions that might disclose claim limitations through a different interpretation. Examples include identifying a lack of novelty reference published, filed, or claiming priority before the effective filing date, or combining two or more prior art publications to show that the claimed invention is obvious or lacks an inventive step.

Summary: Relying solely on 102(b) prior art can weaken your ability to challenge patent validity comprehensively. By expanding your search to include a variety of prior art references that cover the claims either individually or in combination, you enhance your chances of presenting relevant prior art that supports a robust argument against the patent’s validity.

II) Blind Trust in Database Filters

Using database filters, especially date filters, in patent databases is a common practice to streamline the search for prior art. However, this approach can lead to significant pitfalls. It is crucial to recognize the limitations and potential inaccuracies associated with blind trust in these filters.

Patent databases often contain “phantom” applications, which are records that appear in the database without corresponding published documents.

These phantom entries can mislead searchers, making them believe they have found relevant prior art when, in fact, no actual publication exists. Thus, relying solely on database metadata can result in incomplete or erroneous search results.

To avoid this issue, always verify the existence and relevance of publications by checking the actual PDF documents. Do not depend only on metadata provided by the database. Reviewing the full documents ensures that all critical details are considered, which might be missed otherwise.

In addition, discrepancies in publication dates, particularly for non-patent literature (NPL), pose a significant challenge. NPL might appear online or be distributed by mail before the official publication date recorded in the database.

For example, an academic journal article might be available on a publisher’s website weeks or months before the official publication date. This early access could qualify as prior art, but if the database only lists the official date, this crucial reference could be overlooked.

Therefore, it is essential to cross-check publication dates from multiple sources. Here are some key actions to avoid pitfalls:

Verify the existence of documents:

- Always access the actual PDF documents, not just the metadata.
- Ensure that the publication truly exists and matches the database record.

2.Cross-check publication dates:

- Compare dates from multiple sources to ensure accuracy.
- Be mindful of early online or mail distributions that might not be reflected in the database.

3. Consider the context of disclosure:

- Understand the context in which the prior art was disclosed.
- Technical reports or presentations at conferences might qualify as prior art earlier than their official publication.

Summary: Blind trust in database filters can lead to incomplete or inaccurate prior art searches. By verifying the existence and relevance of documents and cross-referencing publication dates, patent searchers can avoid these pitfalls. This thorough approach ensures all potential prior art is considered, thereby strengthening the argument for patent invalidity.

III) Drawing a Line at the Critical Date

In patent invalidity searches, it is common practice to focus solely on references published before the critical date, which is typically the filing date or priority date of the patent application.

While this approach is logical and often effective, it can also be a pitfall if it leads to the automatic exclusion of references published shortly after the critical date.

Patent searchers should avoid the mistake of disregarding publications within a year after the critical date. These references can provide valuable information that may lead to the discovery of relevant prior art before the critical date.

Moreover, publications from this period can offer insights into the evolution of technology and industry trends, potentially uncovering experts or documents that can further support the invalidity argument.

Here are the key reasons why references published shortly after the critical date should not be overlooked:

Uncovering Pre-Critical Date Information:

- Publications appearing shortly after the critical date might cite earlier works that are relevant.
- These references can lead searchers to prior art that predates the critical date, which may not have been initially considered.

2. Understanding Technology Evolution:

- Examining publications from just after the critical date can provide context about the state of the art at the time.
- This understanding can help demonstrate how the claimed invention was obvious or a natural progression of existing technology.

3. Identifying Potential Expert Witnesses:

- Authors of publications from this period are often knowledgeable in the field and may serve as expert witnesses.
- These experts can provide testimony on the obviousness or lack of novelty of the claimed invention.

4. Cross-Referencing Citations:

- Publications post-critical date often cite earlier works, which can be investigated further.
- These citations can uncover hidden gems of prior art that strengthen the invalidity case.

Summary: Automatically excluding references published after the critical date can result in missed opportunities to find relevant prior art.

By considering publications within a year after the critical date, patent searchers can gain valuable insights into the state of technology and uncover additional references that support the argument for invalidity.

This broader approach ensures a more comprehensive and effective patent invalidity search.

IV) Staunch “Broadest Reasonable Interpretation” Standard

Another common pitfall in patent invalidity searches is the rigid application of the “Broadest Reasonable Interpretation” (BRI) standard, a practice inherited from the patent examination process.

While this approach can be useful during the examination of a patent, it may not always be appropriate or effective in invalidity searches. The BRI standard involves interpreting patent claims as broadly as reasonably possible to encompass all potential interpretations, aiming to ensure that the patent does not overreach.

However, this broad interpretation can sometimes lead to inaccurate results or the overlooking of critical nuances in the claims. To avoid this pitfall, it is essential to engage in a more nuanced and precise interpretation framework that takes into account several key factors.

Examiner’s Interpretation:

- Consider how the patent examiner interpreted the claims during prosecution.
- Review the examiner’s notes and any references cited during the examination process to understand the scope of the claims.

2. Applicant’s Arguments:

- Analyze the arguments made by the patent applicant during prosecution, including any claim amendments and responses to office actions.
- These arguments often clarify the intended scope of the claims and can highlight limitations that might not be apparent from the claim language alone.

3. Reasons for Allowance:

- Investigate the reasons provided by the examiner for allowing the claims.
- This can reveal specific claim elements or combinations that were considered novel and non-obvious, which are crucial for determining prior art relevance.

4. Markman Decision Claim Construction:

- In cases where the patent has been litigated, review the Markman hearing and the court’s claim construction.
- The court’s interpretation of the claims can significantly impact the scope and validity of the patent.

By discussing and clarifying the interpretation framework with the team commissioning the search, patent searchers can ensure a more accurate and effective approach. This involves a detailed examination of the patent file history and any relevant litigation documents to gain a comprehensive understanding of the claim scope.

Summary: Adhering strictly to the Broadest Reasonable Interpretation standard can lead to an overly broad and sometimes inaccurate understanding of patent claims.

By incorporating a detailed and context-specific interpretation framework, including examiner’s notes, applicant’s arguments, reasons for allowance, and court decisions, patent searchers can more accurately assess prior art and strengthen the case for invalidity.

This approach ensures a precise and thorough patent invalidity search, reducing the risk of overlooking critical prior art.

V) Solely Focusing on Patent Literature

A significant pitfall in patent invalidity searches is the exclusive focus on patent literature while neglecting non-patent literature (NPL). Patent literature includes previously granted patents and published patent applications, which are vital sources of prior art. However, relying solely on patent literature can result in missing relevant prior art found in diverse sources outside the realm of patents.

Non-patent literature encompasses a wide array of publications, including journal articles, conference proceedings, technical standards, theses, textbooks, product manuals, videos, blog posts, and more.

These sources can often contain critical information that predates the patent in question and can be pivotal in challenging its validity.

Here are key reasons to expand searches beyond patent literature:

Broader Scope of Information:

- Non-patent literature often covers technological advancements, experimental results, and practical applications that might not be captured in patent documents.
- Academic and industrial research publications can reveal prior art that demonstrates the claimed invention’s lack of novelty or obviousness.

2. Early Disclosures:

- Technological developments and innovations are frequently disclosed in conference proceedings and journal articles before being patented.
- These early disclosures can serve as strong prior art references to invalidate patent claims.

3. Real-World Applications:

- Product releases, user manuals, and technical specifications often describe implementations of technology that can anticipate patent claims.
- These documents provide practical insights into how technology was used and understood in the industry before the patent’s filing date.

4. Diverse Formats and Media:

- Non-patent literature comes in various formats, including digital and physical media, which might not be fully digitized or indexed in patent databases.
- Accessing physical libraries and archives can uncover hidden gems of prior art that are not available online.

5. Technical Standards and Regulations:

- Industry standards and technical regulations often precede patents and can provide a basis for invalidating claims.
- These documents can show that the claimed invention was already required or suggested by existing standards.

Summary: Focusing exclusively on patent literature can result in an incomplete prior art search. By incorporating non-patent literature, such as journal articles, conference proceedings, technical standards, product manuals, and more, patent searchers can uncover critical prior art that strengthens the argument for patent invalidity.

A comprehensive search strategy that includes both patent and non-patent literature ensures a thorough and effective invalidity search, enhancing the likelihood of successfully challenging a patent’s validity.

Final Thoughts

Conducting a thorough patent invalidity search is a complex and meticulous process, requiring a deep understanding of various sources of prior art and the strategic use of legal provisions.

The pitfalls discussed—over-reliance on 102(b) prior art, blind trust in database filters, rigid adherence to the critical date, strict application of the Broadest Reasonable Interpretation standard, and exclusive focus on patent literature—highlight the challenges and nuances involved in this endeavor.

Ultimately, the goal is to ensure that the patent system remains robust and that only truly novel and non-obvious inventions are granted patent protection.

By avoiding these common pitfalls and adopting a holistic search strategy, patent professionals can contribute to the integrity and fairness of the patent system, ensuring that innovation is properly rewarded and protected.

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