The patent process can be expensive, so the last thing you want to do is spend a lot of money preparing and filing an application when there is easy to find knock-out prior art that will prevent a patent, or at the very least make any patent that is obtained extremely narrow. For this reason many choose to begin the patent process with a patent search, but many others will forego a patent search and simply file a patent application. The problem, however, is that everything winds up being described as equally important when experience teaches that will not be the case. Proceeding without a search is particularly problematic today given the likelihood that any valuable patent will be challenged in a post grant proceeding at the Patent Trial and Appeal Board. Getting rights you have confidence in has to be the name of the game.
Challenging patents in post grant proceeding also requires a competent, thorough search too, for many obvious reasons and at least one not so obvious reason. When a challenger seeks to take out claims to a patent the current rules are significantly slanted in favor of the challenger and against the patent owner. The challenger does not really need to take out all the claims to a patent in post grant. Instead, you may opt to find the best prior art available and focus on a limited number of truly vulnerable claims (of which there are typically several to choose). Put all your attention on those vulnerable claims, get those claims declared invalid, and then circle back with a reexamination request where the burden will then be shifted on the patent applicant.
This strategy works because if you lose a claim as being invalid then obvious variants will also be lost. From the challengers perspective this strategy can be particularly attractive because when you focus on the weakest claims the likelihood of institution goes up, as does the likelihood of prevailing in a final written decision, thus minimizing the potential negative impacts a challenger would face if the PTAB were to refuse institution or ultimately decide claims remain valid in a final written decision. Furthermore, this two step process furthers a war of attrition approach, which can be used to outlive the patent owner by continually pushing off federal court litigation, which can make it extremely expensive and make it virtually impossible to find contingency representation.
Of course, modern patent practice all starts with a competent patent search and thorough understanding of the prior art.
Please join me for a free webinar discussion — The Hunt for Prior Art: From filing to challenge, modern patent practice is all about the search — on Thursday, April 27, 2017 at 2pm ET. In addition to answering as many questions from the audience as possible, we will discuss:
- What level of search should be undertaken prior to filing a patent application.
- What level of search is required before filing a post grant challenge?
- Deciding where to look, what to disclose (Rule 56) and how much to use in an IPR petition.