Modern patent practice is all about prior art


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 “knock-out” prior art easily found that will prevent a patent, or at least make any patent that is obtained extremely narrow. For this reason, many choose to begin the patent process with a patent search. 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 to the patent applicant.

This strategy works because if the patent owner loses a claim as being invalid then obvious variants will also be lost. From the challenger’s 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. This minimizes the potential negative impacts a challenger would face if the PTAB were to refuse institution or were to ultimately find the claims 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, making it extremely expensive and virtually impossible to find contingency representation.

Soe, modern patent practice all starts with a competent patent search and thorough understanding of the prior art.

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