Potential liability of lawyers performing/handling patent and trademark searches: the questions are the answers


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Potential liability of lawyers performing/handling patent and trademark searches: the questions are the answers

  1. 1. Potential liability of lawyers performing/handling patent andtrademark searches: the questions are the answers ©Professor Jon R. Cavicchi, IP Librarian 11/1/12
  2. 2. Mixed audience
  3. 3. Looking through the keyhole atproblems lawyers can face dealing with searches
  4. 4. The end is the beginning….• Searching, outsourcing, analyzing, handling patent & trademark data is complex – Uses and options are constantly growing• Direct legal authority very sparse• Think many steps ahead before you perform, outsource or handle patent & trademark data• At every step, stop and counsel the client and put it in writing• WITH ROBUST DISCLAIMERS!
  5. 5. Consistent with Standard Advice• Keep Your Clients Informed – (1) discussing, fully and candidly, upon initial consultation, the services to be rendered, the terms of payment, and any conditions to or problems raised by the engagement • [The advantages and disadvantages of each search methodology should be discussed with the client so that the client can make an informed choice about which methodology makes the most sense for a particular technology.] 802 PLI/Pat 283 – (2) confirming all of this in writing to the client, preferably receiving a signed acknowledgement from the client; and • [Specifically, the disclaimers should address inherent limitations and potential deficiencies of the clearance search that may have caused pertinent patents to be missed.] Id. • Paul W. Vapnek, INTELLECTUAL PROPERTY LAW PRACTICE IN THE 1980S: DEALING WITH THE EXPECTATIONS OF A MORE INFORMED CLIENTELE, 14 AIPLA Q.J. 91 (1986)
  6. 6. Lawyers deal with searches in a number of settings• Prosecution• Transactional work• Litigation• Handling IP business transactions• In house counsel• Outside counsel
  7. 7. Patents are legal, technical and business documents
  8. 8. “Patent data is the greatest source of competitive intelligence on earth”• how companies can tap the asset values in intellectual property to achieve board and shareholder objectives, we pay particular attention to the use of patents to:  Generate new revenues through licensing  Boost earnings per share and total shareholder return  Improve return on investment for R&D and seed continuing innovation  Raise corporate valuations and enhance equity and other financing efforts  Serve as the currency of mergers, acquisitions, and joint ventures
  9. 9. PATENT LANDSCAPE SEARCH• Patent landscaping uncovers:  Market opportunities for licensing  Competitive technology trends  Gaps in corporate patent portfolios  Opportunities for entry into new markets  Targets/risks for patent infringement litigation  Opportunities for redirecting R&D efforts
  10. 10. Patent example: many types of searches• Patentability • Freedom to to operate• Prior art • Family/corresponding• Novelty • Right to make• Pre-examination • Clearance• Infringement • Justification• Validity • Continuing• Right to use • Patent Status
  11. 11. 28+ Post grating actions include... • adverse decision • suits • certificate of • reissue correction • reexamination • disclaimer • withdrawal • delayed fee • assignment • error correction • expiration • extensions
  12. 12. Patent Searching Terminology is Messy!• Lawyers, scientists, business, IP, international development professionals use labels without a common reference vocabulary• Leads to “semantic disconnect”• Get as much detail as to the purpose and nature of the search, analysis, report…
  13. 13. Raises so many questions to avoid so many mistakes• Whether to do a search• When to do a search• Who to perform the search: in house & outsourcing• How to discover & deal with prior searches• Disclosing searches• Dealing with clients who forbid or strictly limit searches
  14. 14. Tick tock…time is of the essence• Take off my patent research professor hat and put on my librarian hat
  15. 15. First, the essentials…Ethical and malpractice dimensions
  16. 16. Potential Legal Authorities Pertinent to Searching• State Ethics Rules & Opinions• PTO Rules• Rule 11 (and PTO equivalent) for trouble caused, not only to the Court, but to the adversary who filed frivolous claims and failed to conduct a reasonable pre-complaint inquiry into fact and law that would have showed no basis for the litigation.• Common law causes of action – Malpractice – Breach of contract
  17. 17. What are the potential ethical potholes: the duties of a lawyer with searches• Competence• Loyalty/Representation• Diligence• Client communications• Fees• Independent judgment and candid advice• Meritorious claims• Candor• Confidentiality• Conflicts
  18. 18. Overlapping Rules to Consider • Whose Rules Rule? Resolving Ethical Conflicts During Representation of Clients in Patent ProsecutionAbstract:This paper explores the conflict between the PTO Rules of Professional Conduct and the state rules ofethics. This conflict is not readily apparent as a patent attorney would be justified in assuming that conductdeemed ethical under the state requirements would be acceptable under the PTO ethics rules. However, thePTOs "Duty of Candor" potentially presents the patent attorney with a seemly irresolvable conflict. Anoverview of patent prosecution is included as well as a comparison of the of the ABA Model Rules ofProfessional Conduct and the PTO Code of Professional Responsibility. We argue that the state rules ofethics should dominate the practice of all law and should supersede enforcement of the PTO Duty of Candorwhere conflicts arise during simultaneous patent prosecution.Rose and Jessup, Wake Forest Univ., Public Law Research Paper No. 02-5
  19. 19. What do legal sources have to say? • Disciplinary Opinions • Ethics opinions • State & Federal Cases – Malpractice – Breach of contract • Jury Verdicts • News • Disclaimer: selective
  20. 20. Professor/Practitioner argues for the ethical duty to searchThus, to achieve greater specificity in claim drafting, pre-filing searching byapplicant is an implied new applicant duty under Festo.
  21. 21. No guidance from ethics sources
  22. 22. From the Desk of Prof. Hricik
  23. 23. Results?• Malpractice actions – Client who are injured by • No search • Inadequate search• Resulting in – Infringement – R&D spent on inventions that are not novel
  24. 24. What is the Standard of Care?• There appears to be no question that a patent attorney has a duty to conduct a patent clearance search with that degree of skill and knowledge normally possessed and exercised by an attorney under the given circumstances.• Thus, the critical issue in Carabotta is whether the patent attorney satisfied the professional standard of care in performing the search. A. Samuel Oddi, PATENT ATTORNEY MALPRACTICE: AN OXYMORON NO MORE, 2004 U. Ill. J.L. Tech. & Poly 1 (2004)
  25. 25. KGRM Case• The legal malpractice suit was filed by Pierce Atwood in federal court in Maine. In this suit, Edens alleged that KGRM was liable for – (1) negligently advising Edens that its device would not infringe Golf Techs patent, and – (2) failing to diligently search for prior art and failing to raise the defense of patent invalidity. • William Jordan, Professional Liability Reporter, (February 2010)• An inadequate search may also give the client the false impression that the technology is clear of patent risks.
  26. 26. • Malpractice actions in general have proliferated; intellectual property lawyers, no less than other lawyers, are targets for such suits.• Malpractice actions have been based upon allegations of negligent searching • Paul W. Vapnek, INTELLECTUAL PROPERTY LAW PRACTICE IN THE 1980S: DEALING WITH THE EXPECTATIONS OF A MORE INFORMED CLIENTELE, 14 AIPLA Q.J. 91 (1986)
  27. 27. Some data from patent lawyer malpractice insurersMalpractice insurance premiums have shot upwardfor attorneys over the past few years, but theincrease for patent attorneys has been especiallydramatic. Some patent firms are finding it hard tocome by malpractice insurance at any price.http://www.bizjournals.com/seattle/stories/2004/05/17/story6.html
  28. 28. Patent Malpractice Suits A Growing Threat“What used to be a gentle law of practice whichinvolved close relationships between clients andpractitioners has been exploited of late,” said Sharinn,who now practices with Baker & McKenzie LLP. “Aspatents grow in value, if things do not go the way aninventor wants, they will take the approach to recoupmoney by suing, which is being handled by slip-and-fallguys by and large.”Patent Malpractice Suits A Growing Threat By Ron Zapata, Nov 14, 2007
  29. 29. Excellent source of content andtraining on patent practice ethics,malpractice, patent searching andclient opinion letters
  30. 30. Focus #1Patent Prosecution
  31. 31. Does the U.S. Code or MPEP require a patent search
  32. 32. To qualify for the new accelerated examination program, applicant must: …8. Conduct a pre-examination search
  33. 33. Patent professionals, academics & policy experts debate this endlessly
  34. 34. Applicant Responsibility• “Applicants must take responsibility for quality patent preparation and prosecution and not rely solely on examiner”• “Corporate filers should conduct a pre-filing search citing the most relevant art to the examiner” – Mark Adler, IPO President, “Quality Patent Examination and Prosecution,” Trilateral Public Users Conference, Washington, D.C., November 8, 2007
  35. 35. Duty of Disclosure• Must disclose any KNOWN relevant art• Duty of candor• Inequitable conduct• Fraud upon the patent office
  36. 36. Outsourcing - 1019 PLI/Pat 185Once the law firm has satisfied itself that the lawyers and non-lawyersidentified by the intermediary are competent to perform the work, the law firmmust ensure that it sets up supervisory procedures that will ensure properservice of the client and compliance with ethical standards.Supervision by the law firm and its lawyers should include (i) ensuring that theforeign worker understands the patent searches to be conducted andthe information necessary to conduct those searches; (ii) discussing with theforeign workers any relevant legal or ethical rules and constraints; and (iii)gaining an understanding of the foreign firms practices and procedureswith respect to conducting the patent searches and memorializing the results.The law firm should tailor procedures relevant to the patent work that needs tobe performed for supervision of foreign legal support to the education andtraining of the foreign workers.The supervising lawyer should consider steps to avoid compromisingits clients confidential information
  37. 37. Implications of AIA• Various provisions of the AIA further suggest that it will become increasingly important for many applicants to keep tabs on potentially material prior art and on the activities of their competitors.• Many patent applicants prefer not to look for prior art, for example, to avoid searching costs and the potential duty to disclose their findings to the Patent Office.• Under the AIA, however, there may be at least three compelling reasons to more diligently find and disclose relevant art to the PTO. – Daniel J. Sherwinter and Patrick M. Boucher, THE AMERICA INVENTS ACT, 41-JAN COLAW 47 (2012)
  38. 38. • “[The] inequitable conduct defense is frequently pled, rarely proven, and always drives up the cost of litigation tremendously.”• Under the AIA, an applicant apparently can request supplemental examination at any time of any potential prior art, not just patents or printed publications.• In exchange, patents will not be held unenforceable on the basis of information considered, reconsidered, or corrected in supplemental examination.• From a defensive standpoint, an applicants previous knowledge and disclosure of good art to the Patent Office during prosecution can take the wind out of the sails of any of these types of future third-party challenges.• From an offensive standpoint, keeping tabs on potentially relevant art and competitive activities can stock a companys arsenal for future challenges of their own against their competitors patents or patent applications.
  39. 39. Professional Searchers & AIA
  40. 40. 7-20 Chisum on Patents § 20.04 Injunctive ReliefColonial Data Technologies Corp. v. Cybiotronics Ltd., 41 USPQ2d 1763, 1769(D. Conn. 1996) ("We must look at the harm to [the accused infringer] that wouldoccur from granting a preliminary injunction. While we recognize that requiring[the accused infringer] to remove [its product] from the market will beharmful, the equities of such a hardship are somewhat balanced by the factthat [the accused infringer] admits that it does not perform patent searchesprior to introducing new products into the United States. By so blindlyentering the [product] into the market, [it] assumed some risk that it mighthave to withdraw its device."; "the harm caused to [the patentee] by suchalleged infringement is substantial.
  41. 41. Searches and “willfulness”
  42. 42. •No company is immune from patent litigation, and that the stakes are too high to risk not conductingpatent due diligence.•Unfortunately, many companies and patent lawyers fail to conduct patent searches due to the fearof “willful infringement.”•In a patent litigation suit, a defendant can incur treble damages if the defendant willfully infringes a patenti.e. knows about the patent in question and yet goes ahead to produce an infringing product in anobjectively reckless manner. (See the Supreme Court’s opinion in In re Seagate Tech., LLC.)•Patent searches in and of themselves, however, are not objectively reckless and therefore do notconstitute willful infringement. After all, patent searches are a prudent use of company resources andgives a product developer time to design a product in a way that does not constitute infringement.•Research in Motion, on the other hand, was found to willfully infringe NTP’s patents - because thecompany was on notice of NTP patents, conducted no investigation, and still moved forward to produce itsproduct. In fact, in an interview with former•Chief Judge of the United States Court of Appeals, Paul Michel, Judge Michel adamantly supports patentliterature searches. As Judge Michel states: “I think any chief patent counsel who advises the scientistsand engineers in his company that they should never read patents is practically incompetent. There isno reason in my judgment why company researchers should have to ignore the patent literature. Hardlyany damage awards are ever enhanced. In most cases, willfulness isn’t even established, and even whenit is, enhanced damages are not automatic” [emphasis added].•Besides avoiding costly litigation, patent searches can help bolster the strength of a patent applicationand increase its likelihood of passing patent examiner scrutiny. Patent landscape searches provide yourpatent application with relevant prior art references. Knowledge is power.•By showing how your patent differs from current technologies, you show the patent examiner (and courtsin future litigation) that you have done your due diligence and conscientiously made an effort to createinnovation. After all, innovation is what the patent system is all about. http://www.cleantechpatentedge.com/2011/12/use-patent-due-diligence-to-lower-your-patent-litigation-risks/
  43. 43. •It is also important to note that if you do not conduct a prior art researchbecause you are afraid that there are probably some patents that you mayinfringe, it’s what is called “willful blindness” in the US case law. You know therisks, you continue producing and you don’t do anything to avoid the potentialinfringement.•Several IP experts have also analyzed the meaning of “willful blindness”.Audrey A. Millemann (The Weintraub Firm’s IP Law Blog, Supreme CourtAdopts Willful Blindness Standard for Inducing Patent Infringement) explains: “Awillfully blind defendant is one who takes deliberate actions to avoid confirming ahigh probability of wrongdoing and who can be said to have actually known thecritical facts…”.James Yang (OC Patent Lawyer, Active Inducement, Willful BlindnessSufficient) explains how to find willful blindness: “(1) the defendant mustsubjectively believe that there is a high probability that a fact exists and (2) thedefendant must take deliberate actions to avoid learning of that fact.”•If you choose not to conduct patent search you may avoid "willful infringement",but you still have the risk of finding yourself in the middle of a patent battle andhave to take “willful blindness” • http://www.crowdipr.com/blog/willful-patent-infringement-and-willful-blindness
  44. 44. Focus #2Trademark Prosecution
  45. 45. Similar to Patent Practice• No duty to conduct a trademark search• 37 C.F.R. § 10.23(c)(2) (it is a violation of the PTO Code to knowingly give false or misleading information or knowingly participate in a material way in the giving of false or misleading information to the PTO); PTO Code, 37 C.F.R. § 10.23(d) (a practitioner who acts with reckless indifference to whether a representation is true or false may be charged with knowledge of its falsity.); PTO Code, 37 C.F.R. § 10.85 (in the representation of a client, a practitioner may not knowingly advance a claim or defense that is unwarranted under existing law, knowingly make a false statement of law or fact, or assist in conduct that is known to be illegal or fraudulent.)• The standards for candor to the PTO may be lower in trademark matters, a violation of this duty is serious and may result in a cancellation of a registration or may serve as an adversary’s absolute defense in an infringement action. In practice, however, a violation of the duty of candor may be difficult to prove because it requires state of mind evidence. – Stephen W. Feingold, Jessica N. Cohen and Meredith A. Carlo, Ethical Considerations for Trademark Lawyers (by Morgan, Lewis & Bockius LLP)
  46. 46. •What constitutes fraud on the PTO in connection with an applicant’sdeclaration in a trademark application that it has the right to use the markin commerce. ?•CAFC in In re Bose Corporation, held that a trademark is obtained fraudulentlyonly if ‘the registrant knowingly makes a false, material representation with theintent to deceive the USPTO’.•The 7th Circuit refused to conclude that a plaintiff intended to mislead the PTObecause the plaintiff had no duty to investigate references in a search reportprior to making a declaration to the PTO that it has rights to use a mark.•Failure by a newcomer to conduct a trademark search may entitle the owner ofestablished trademark rights that are infringed by the newcomer to remediessuch as injunctive relief, whereas conducting a search may provide thenewcomer with something of a good faith shield that diminishes liability if suedfor infringement.
  47. 47. Hilfigers choice not to perform a full searchunder these circumstances reminds us oftwo of the famous trio of monkeys who, bycovering their eyes and ears, neither sawnor heard any evil. Such willful ignoranceswould not provide a means by whichHilfiger can evade its obligations undertrademark law
  48. 48. Further reading• Linda K. McLeod and Stephanie H. Bald, Ethical Issues in U.S. Trademark Prosecution and TTAB Practice, 10 J. Marshall Rev. Intell. Prop. L. 365 (2010-2011) – http://www.finnegan.com/resources/articles/articlesdetail.aspx?news=7773074a-f847-4715-bbee-ceede1b2c428• William Freivogel, Thomas B . Mason and Robert Puglisi, Trademark Ethics: Conflicts of Interest and Other Ethical Issues, http://bit.ly/RDAA51
  49. 49. A Few Words for Librarians in the House Just say no to giving legal advice
  50. 50. What is Legal Advice?• Requires legal knowledge, education, skill and judgment• Interpretation of the law• Specific application of the law to a particular circumstance10/31/12 59
  51. 51. Legal Advice Examples• Which form should I use?• How do I fill this form out?• Can I use these patent drawings in my brochures?• Is this patent protected by copyright?• Is my invention patentable?• Do you think that I can get a trademark on this?• Is my work covered by copyright?• What are the specific rules I need to know on changing assignee? While an application is pending can I change inventors?10/31/12 60
  52. 52. What is the practice of law?The "practice of law" is the application of legal principlesand judgment with regard to the circumstances orobjectives of a person that require the knowledge and skillof a person trained in the law. ABA Center for Professional Responsibility Task Force on the Model Definition of the Practice of Law (Draft 9/18/02) http://www.abanet.org/cpr/home.html 10/31/12 61
  53. 53. What is unauthorized practice of law (UPL)?• Most librarians are not lawyers and it is illegal for persons to practice law without a license. Among the states, there is no uniform definition of "unauthorized practice of law." Lack of clarity in this area creates uncertainty as to what duties librarians and paralegals may perform and what duties must be performed by licensed attorneys. It creates the potential for unknowingly and unintentionally committing an unauthorized practice of law.• For more information see the UPL statutes and pertinent case cites listed by state at: http://www.paralegals.org/Development/UPL-Chart.pdf10/31/12 62
  54. 54. Be vigilant to avoid mistakes
  55. 55. Materials on impact of AIA on Patent Searching
  56. 56. Effective Utilization of PatentSearches in the Wake of the AIA Patent Reform Law April 30, 2012
  57. 57. Panel Members• Moderator: – Robb Evans, Business Process Management & Strategy, Global Patent Solutions LLC• Panelists:– Kathryn Odland , Founder & Principal, Global Patent Solutions LLC– Eric Wrzesinski , Patent Attorney & Research Manager, Global Patent Solutions LLC
  58. 58. AIA Changes Affecting Patent Prosecution Preissuance Submissions By Third Parties: Section 8 of the AIA • “Any third party may submit for consideration and inclusion in the record of a patent application, any patent, published patent application, or other printed publication of potential relevance to the examination of the application, if such submission is made in writing …”• Will take effect on Sept. 16, 2012 • Submissions can be made 6 months after the date on which the patent application is first published
  59. 59. Implication of AIA Changes Affecting Patent ProsecutionImplications of AIA Changes: One Perspective: •Reserve fund of patent office fees collected in excess of its budget that the USPTO may access •Reduction of USPTO patent application Backlog •Due to increased funding and resources available to the USPTO •USPTO must petition Congress before it can spend money from the reserve fund •No elimination of Congressional “fee diversion”
  60. 60. Implication of AIA Changes Affecting Patent Prosecution Future Implications Regarding Patent Prior Art Searching: Our Viewpoint: •As mentioned previously, we may see an increase in the total number of vetted non-provisional patent application filings by Technology Transfer operations and others – however, filing with accurate claims becomes much more important for protecting the invention •Increased patentability searching for Pre-issuance Submissions By Third Parties •Further implications of this: Tech Transfer operations had better be prepared for possible challenges submitted by larger players who may be doing 3rd-party pre-issuance monitoring •Conversely, well-prepared applications may actually receive “free advertising” to those same parties doing pre-issuance monitoring
  61. 61. Patent Post-Grant PriorArt Search Strategy
  62. 62. Patent Post-Grant Prior Art Search Strategy Current Prior Art Searching Activities •Patent Validity Searches •Patent Invalidity Searches •Freedom-to-Operate (“FTO”) Searches •Patent Litigation-Related Searches
  63. 63. AIA Changes Affecting Patent Post-Grant ActivitiesNew Post-Grant & Inter Partes Review Proceedings: •Will take effect on September 16, 2012 •Opposition can file a petition for Post-Grant Review within 9 months after the issuance or broadening reissuance of a patent if the opposition has not already brought a patent validity civil action •Replaces the current Inter Partes Reexamination proceeding •Quick proceeding for challenging the validity of a patent in the USPTO •Inter Partes Review request can be filed when the 9-month period for Post-Grant Review has expired or after the termination of a Post-Grant Review.
  64. 64. AIA Changes Affecting Patent Post-Grant ActivitiesNew Post-Grant & Inter Partes Review Proceedings: • Will be conducted before the new Patent Trial and Appeal Board, not an Examiner • Post-Grant & Inter Partes Reexamination standard is “substantial new question of patentability” for filings prior to Sept. 16, 2011 • Post-Grant & Inter Partes Reexamination and Review standard is “reasonable likelihood that the requester will prevail” for filings on or after Sept. 16, 2011
  65. 65. AIA Changes Affecting Patent Post-Grant Activities • Estoppel in the USPTO • Estoppel in Civil Actions • Appeal to the Court of Appeals for the Federal Circuit
  66. 66. AIA Changes Affecting Patent Post-Grant Activities• Joinder of Parties: Section 19 of the AIA bars a plaintiff from suing multiple defendants in a single lawsuit if the only jurisdiction for the joinder is that all defendants are alleged to have infringed the same patent • Provision became effective as of September 16th, 2011 • Eliminates the patent troll strategy of naming unrelated parties in a single infringement lawsuit • Corporations will be less concerned about constantly being sued by patent trolls
  67. 67. AIA Changes Affecting Patent Post-Grant ActivitiesAdvice of Counsel: Section 17 of the AIA • “The failure of an infringer to obtain the advice of counsel with respect to any allegedly infringed patent, or the failure of the infringer to present such advice to the court or jury, may not be used to prove that the accused infringer willfully infringed the patent or that the infringer intended to induce infringement of the patent” • Provision became effective as of September 16th, 2011 • Eliminates the automatic defense afforded by an FTO opinion
  68. 68. Impact of the New AIA Provisions on Patent Prior Art Searching Abbreviated Summary: • Inventors may either publicly disclose their invention earlier or file better-crafted applications • Counter to early prognostications, sloppy provisionals will likely actually decrease • Due-diligence (e.g., well-crafted claims) will increase in importance for applications to survive the new vetting process • New patent-grant monitoring processes are likely to emerge, offering either headaches or opportunities; pro-activeness will position winners and losers • The value proposition on well-vetted patents will likely increase
  69. 69. Questions & Comments
  70. 70. Commentary from Recent Literature Collected by Jon Cavicchi
  71. 71. Various provisions of the AIA further suggest that it will become increasingly important for manyapplicants to keep tabs on potentially material prior art and on the activities of their competitors.Many patent applicants prefer not to look for prior art, for example, to avoid searching costs andthe potential duty to disclose their findings to the Patent Office. Under the AIA, however, theremay be at least three compelling reasons to more diligently find and disclose relevant art to thePTO.One reason is the new supplemental examination procedure, under which a patent owner canrequest that the PTO “consider, reconsider, or correct information believed to be relevant” to apatent. It seems that almost every patent infringement proceeding includes allegations ofinequitable conduct, often based on a failure by the patent owner to disclose arguably materialreferences to the Patent Office in violation of the duty of disclosure. Senator Orrin Hatch (R-Utah)stated: “[The] inequitable conduct defense is frequently pled, rarely proven, and always drives upthe cost of litigation tremendously.” Under the AIA, an applicant apparently can requestsupplemental examination at any time of any potential prior art, not just patents or printedpublications. In exchange, patents will not be held unenforceable on the basis of information *53considered, reconsidered, or corrected in supplemental examination. (The ALA. states that patentsalso will not be held unenforceable on the ground that a request for supplemental examination wasnot made.)The other two reasons for disclosing prior art to the PTO relate to two types of AIA procedureswhereby third parties can administratively challenge a patent or patent application: third-partysubmissions, and post-grant oppositions. From a defensive standpoint, an applicants previousknowledge and disclosure of good art to the Patent Office during prosecution can take the wind outof the sails of any of these types of future third-party challenges. From an offensive standpoint,keeping tabs on potentially relevant art and competitive activities can stock a companys arsenal forfuture challenges of their own against their competitors patents or patent applications. 41-JAN Colo. Law. 47 (2012)
  72. 72. 4. Reconsider Prior Art and Searching Strategies.The AIA brings the U.S. more in line with other countries that allow pre-grant oppositionsby making it easier for third parties to submit to the USPTO information relevant to apending patent application (including prior art from anywhere in the world). The new rulesextend the timeframe for third parties to challenge a pending application and broaden thetypes of information which may be submitted. For example, the AIA allows third parties toweigh in on patent applications with serious thoughts, making it possible for the opposerto file amicus-like briefs. Prior to the issuance of a pending patent application, companiesmay submit to the USPTO prior art and any prior statements regarding the patent claimsmade by the applicant before federal court or the USPTO.In view of this, companies should reconsider the tradeoffs of performing their own priorart searches pre-filing or during prosecution. By proactively disclosing relevant prior art tothe USPTO, companies may reduce the likelihood that the disclosed prior art will be usedsuccessfully in third party submissions or future validity challenges. Results from searchescan also be used against competitors’ applications and in the new post-grant proceedingsavailable under the AIA (e.g., Inter Partes Review and Post-Grant Review). Prior artsearching now may have more strategic value than being merely a yardstick forpatentability or viewed as a Pandora’s box because of the duty of candor.http://www.acc.com/legalresources/publications/topten/responseToAIA.cfm#four
  73. 73. • Inform clients of the greater scrutiny to patent applications andgranted patents regarding novelty, obviousness, and patentablesubject matter. Inform clients that a certain amount of diligencemay be required for prior art and patentability searches toascertain the probability for patent procurement.Aspatore, THE CHANGING TIDE OF PATENTABILITY STANDARDSAND FILING TIMELINES FOR BIOTECHNOLOGIESDecember, 2011
  74. 74. The America Invents Act is not clear whether it is the United States public that matters forthis purpose. Under this change, inventors, patent owners, and users of inventionspresumably must attempt to learn about activities taking place anywhere in the world inorder to determine whether some invention is patentable in United States. If someone inBeijing, Moscow, Tokyo, Hong Kong, New Delhi, Johannesburg, or any remote corner ofthe world offered to sell some product to someone before a patent application is filed, aUnited States patent may no longer issue. If the patent does issue, its validity will dependupon whether a search throughout the world for activities of that kind turns somethingup. The uncertainty about the patentability of some invention and the validity of somepatent will be enormous. The costs of people in the United States learning about whenany product or process was on sale or used anywhere in the world at any time andlearning about whether the someone anywhere in the world did something that madesome invention “otherwise available to the public” will be enormous. The uncertainty andcost of operating under this change will be much greater than the uncertainty and coststhat result from patent interference proceedings. 1 Patent Law, Legal and EconomicPrinciples § 4:42 (2d ed.) (12/11)