Problems with Non Patent Literature

During the patent examination process, I find that examiners rarely use prior art products as references.  Instead the focus is on literature and thus, in the case of products, on product documentation such as user manuals, FAQs, etc.  I find this to be problematic because product documentation does not and cannot cover every subtle aspect of all the features and functions of a given product.  Therefore, reliance on non-patent product literature is covering only a subset of the prior art associated with a given product, whereas the product itself can be used to demonstrate anticipation of claims in a patent application under examination.

There have been occasions when I have been analyzing a given patent and can find a prior art product that seems to anticipate the patent’s claims.  In these cases the product’s literature does not sufficiently describe or demonstrate the functionality covered in the patent while the product itself appears to.

This seems to me to be a fundamental problem with the examination process, and therefore a potential issue with a granted patent’s presumption of validity.  Of course, examiners do not have access to many prior art products, particularly those that are costly, rare, large, etc.  However, when a patent is asserted, the accused party will often go much further than would an examiner in looking not so much for literature as for products to use defensively in order to raise questions of validity.  Certainly one of the first places I look in validity searches is for products, as I know that the examiner has likely not done so.  This is despite 35 USC 102(b) :”A person shall be entitled to a patent unless …the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States…”

In fact, disclosure and examination forms such as the USPTO’s Information Disclosure Statement (IDS) (form PTO/SB/08a) (submitted by the patent practitioner) and the Notice of References Cited (form PTO-892) (provided by the examiner) only include table fields explicitly denoted to be used for documents.  How does one then go about citing a product?

What are the readers’ thoughts on the concentrated patent examiner reliance on literature and not on existing products when searching for and analyzing prior art?  And how do practitioners list a product in an IDS?  What do examiners think about this lack of product citation?  Is it indeed an issue?  I look forward to your comments.

Types of Patent Searches

There are various types of patent searches, with each requiring its own unique search process. Differences between search processes are primarily based on scope and publication dates.  Some different search types are provided below:

A) Patentability: This type of search, normally performed after determining that an invention covers patentable subject matter and has utility, and that its potential return on investment warrants patent pursuance, focuses on finding prior art references that may be relevant to the invention’s novelty and non-obviousness. These prior art references comprise a wide array of materials, such as issued patents, published patent applications, journals and other non-patent literature, etc., and can have been made public at any point prior to the invention’s creation. A patentability search is also sometimes referred to as a “novelty search”, though “patentability search” is a better term because non-obviousness is also an important consideration.

B) Clearance: Also referred to as a “freedom to operate” (FTO) search, a “right to use” search, or an “infringement” search, a clearance search concentrates on uncovering enforceable patents that might act as “roadblocks” to commercialization of a product or service. A clearance search can also be used to uncover pending patent applications that, if eventually issued as patents, might be infringed by a given product or solution.  From 35 USC 154: a patent grant confers “the right to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States” “…for a term beginning on the date on which the patent issues and ending 20 years from the date on which the application [or earlier priority application] for the patent was filed in the United States”. After the patent term expires the patent owner no longer has this right. Therefore, a clearance search can be limited in scope to those patent documents that are or may be enforceable when a given product or service is commercialized. Also, note that to remain enforceable throughout the 20 year term, an issued patent must have its maintenance fees paid at the appropriate intervals. Any potentially problematic patent documents can be addressed in a number of ways, including formulating a sufficient and non-infringing workaround, obtaining a license from the patent owner, obtaining an opinion of non-infringement or invalidity from a patent attorney, etc.

C) Validity: This type of search is similar to the patentability search in that part of its scope is to assess novelty and non-obviousness. In this case however, the assessment is made on a patent instead of for an invention. This type of search is often initiated either when a patent owner desires to assess the strength of a given patent in preparation for enforcement of that patent or when an accused infringer wants to ascertain the validity of an asserted patent. Other names for validity searches are “invalidity” search and “enforcement readiness” search.  As with a patentability search, a validity search will include both patent documents and non patent literature.

D) State-of-the-Art: A state-of-the-art search is often executed in order to determine existing solutions and potential competitors within a given technological field. This type of search is sometimes referred to as a “collection” search, and includes not only patent documents but also non patent literature.

E) Mining: A mining search is carried out in order to find and gather related patent assets owned by an entity — mining searches are usually performed for at least one selected technology area. This type of search is often executed on behalf of an entity which owns many patent assets and which may therefore not be fully aware of the scope of their portfolio. The patent assets uncovered in mining searches may then be rated, and these ratings can be leveraged to gather related assets for licensing or divestiture collections, and can also be used for maintenance decisions.