RETHINKING PRIOR ART
Traditionally, PA and PA searches were assessed at distinct stages of a possible product: for example, to determine the patentability of a product before filing a patent or provisional application, to analyse whether commercialisation can be done without infringement, or to assess the validity of an issued patent. However, the meaning and importance of PA have been altered under the patent reform act and it seems an opportune time to redefine the role of PA searching in competitive intelligence gathering and analysis.
‘New’ patentability and pre-issuance searches
On March 16, 2013, the US will become a ‘first to file’ system. As a result, attorneys may need to file earlier and more oſten. It will also be important to update provisional filings when any improvements are made or when any new relevant prior art is uncovered by the applicant (see also third party pre-issuance submissions, below). In addition, the current statutory provisions for novelty and obviousness (35 USC §§102 and 103, respectively) will be replaced, resulting in an expanded definition for PA.
PA will include any prior patent, public use, printed publication, or invention before
sale of the effective
the claimed filing date.
However, there will be a one-year grace period to file an application aſter disclosure that is attributable to the inventor directly or indirectly. Te scope of PA patentability searches must be expanded to include foreign patents, prior sale and prior use, including those dated less than a year before filing.
From September 16, 2012, AIA will allow third parties to submit relevant PA consisting of patents, published patent applications, or other printed publications, to the US Patent and Trademark Office (USPTO) for consideration and inclusion in the record of pending patent applications filed before or aſter this date. Tis relevant PA will comprise pre-issuance submissions and must occur before the Notice of Allowance is issued, or by the later date of six months from an application’s publication date or the date of the first rejection issued by the examiner.
Te new provision not only significantly expands the time period for submitting prior art documents that may be entered into a competitor’s pending application, it
also
expands what you can say about the documents (accompanying explanations and arguments). Patent applicants and competitors will need to monitor prior art continuously during this expanded time period to exploit this provision to their respective advantage.
www.worldipreview.com
“IT WILL ALSO BE IMPORTANT TO UPDATE PROVISIONAL FILINGS WHEN ANY IMPROVEMENTS ARE MADE OR WHEN ANY NEW RELEVANT PRIOR ART IS
UNCOVERED BY THE APPLICANT.”
Under 35 USC §257, a new supplemental examination procedure provides for post-issuance USPTO proceedings to correct errors or omissions during the prosecution of an application. On September 16, 2012, patent owners are allowed to present information that was inadequately considered, not considered, or incorrect. Tis implies that a PA supplemental examination search will be routinely required by the patent owner once a Notice of Allowance issues.
Post-issuance PA searches
AIA provides two new procedures for challenging granted patents: post-grant review (PGR) and inter partes review (IPR). PGR allows third parties to challenge the validity of a patent on any ground as an alternative to federal court litigation. In order to take advantage of the new PGR proceeding within its nine-month window aſter grant, competitors within the same technological area should consider monitoring the emergence of competing published US patent applications and granted patents. Within nine months of the grant of a patent, a competitor may challenge the patent with any PA, including actual sales or offers to sell, public uses, prior publications, lack of enablement, and inadequate written description. A PGR-PA search will be implicitly broader than a traditional validity search.
Te PGR essentially corresponds to the US version of
an ‘opposition’ proceeding and
provides a significant avenue for third party competitors to attack patents in a forum that is much less expensive than a US federal court. Additionally,
the evidentiary standard which
applies to a PGR is ‘preponderance of evidence’, in contrast to the higher ‘clear and convincing’ standard required in federal court litigation.
On September 16, 2012, IPR will replace inter partes re-examination proceedings. IPR challenges include PA based on patents and publications as well as written statements made by the owner of a patent in another lawsuit or at the USPTO regarding the scope of claims. A petitioner cannot file the IPR until nine months from patent grant or aſter termination of a PGR, whichever is later. To initiate an IPR, a third party must establish a reasonable likelihood that it will prevail on at least one claim.
Andrea Walsh, PhD, JD focuses on patentability,
validity, infringement
and freedom to operate patent searches in support of legal opinions in the pharmaceutical, diagnostic and biotechnological areas. Before joining Express Search in 2006, she was a patent attorney for 20 years and specialised in licensing, due diligence and litigation.
World Intellectual Property Review September/October 2012 83
Te provisions of the AIA discussed above are very complex and its precise interpretation will most likely occur through legal holdings and opinions. However, it is certain that the definition and significance of PA have expanded, and as a consequence, attorneys and inventors need to rethink PA patent-searching strategies throughout the entire patent procurement and competitive intelligence processes.
Andrea Walsh, PhD, is a researcher at Express Search. She can be contacted at:
projects@expresssearch.com
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