Archive for November, 2011

Searching for Prior Art

November 29, 2011

A question that is often asked by new inventors is:  should I do a prior art search before filing a patent application?  The answer, as in most areas of law and life in general, is that it depends.

For individual inventors and smaller companies including start-ups, in most circumstances, I would suggest that yes you should do a prior art search.  Many larger companies have a number of scientists and technologists who are familiar with the technology and what their competitors are doing.  They can also absorb the potential risks of not doing a prior art search.  Most small entities and start-ups do not and can not.

Many, if not most, new inventors are convinced that they are the only ones that have thought of the idea that they seek to patent.  They believe that they have had a flash of insight that no one else has had.  They may even do a bit of Internet research to convince themselves that they are in the clear and that there is no need to do a prior art search.  They are often surprised by the results when they do have a search conducted.

The risks of not doing a search are several.  First, and most importantly, if you plan to commercialize or market the invention as a product or service, you don’t want to get slapped with an infringement lawsuit right out of the gate.  These suits are extremely expensive even if you don’t get hit with a large damage award.  There is a risk that you will not be able to afford to defend such a suit and that all of your hard work in developing the invention, getting it through the prototype stage, and getting it to market would be wasted.  Usually, there is a significant monetary and time investment involved with these steps.  There is also a risk that a court could issue an injunction that would prohibit you from making, using, selling, or offering the invention for sale.

Second, conducting a prior art search prior to preparing a patent application may make prosecution of the application more efficient and cost-effective.  By knowing the closest prior art, the patent application and the claims may be prepared more strategically to take advantage of areas of patentability.  Claims may be prepared that get close to the prior art without encroaching on it.  It may be possible to develop arguments and strategies for convincing the patent examiner that the invention is non-obvious vis-a-vis the prior art. 

You may find that the invention needs to be reconfigured to “design around” patents that are found.  This could add to the value of the invention and potentially give you a competitive advantage.  You may find, however, that someone else has a patent that directly prevents you from patenting your invention.  In such a case, you may determine whether to abandon your endeavor or seek to partner with or secure a license from the patent holder.

The main disadvantages of conducting a prior art search are that it will cost some money and that any material prior art that is uncovered must be disclosed to the Patent Office during prosecution of any patent application that is filed for your invention.  The cost is usually not significant in the overall scheme of bringing a new product or service to market and preparing and prosecuting a patent application.  In fact, a good prior art search can make these endeavors more efficient.  Most patent applicants are looking for strong patent protection in which case it is not a disadvantage to bring prior art to the patent examiner’s attention.  This will permit the patent to be “vetted” over that prior art.


A patent attorney can assist you in having a prior art search performed.  A brief written description and possibly a few drawings or sketches of the invention should be prepared.  This information is provided on a confidential basis to a professional patent search firm that will conduct the patent search.  These firms are usually located in Northern Virginia near the PTO and are staffed with engineers and scientists, at least some of whom may be former patent examiners.  The search firm provides the information to a person with skill in searching the subject matter of the invention who conducts the search.

A good “freedom to operate” and patentability search takes a couple of weeks to complete and usually costs less than $2,000, often less than $1,000.  For a “freedom to operate search,” the searchers will search that claims of US patents that are currently in effect.  For a patentability search, the searchers will also search for older US patents, foreign patents, and non-patent literature that may disclose the invention.

The results will typically include a stack of the closest 20-30 patents and other prior art references.  My practice is to provide these results to the inventor with instructions to review them in detail and to bring any that the inventor believes warrant further review by me to my attention, in any event the closest 3-4.  This saves on attorney time of having to review the entire stack.  The inventor is usually in the best position to determine any differences or similarities between the references and the invention.  At that point, we determine how best to proceed with the matter based on the search results.

One might reasonably ask why the inventor or the attorney cannot themselves conduct the prior art search on Google, the PTO website, or another search engine.  One answer is that it is far more efficient for these experts to perform the search than for the attorney to do so.  Their hourly rates are typically much less.  Second, I am always amazed that the professional searchers find prior art that I or the inventors have not been able to find.

In sum, I almost always advise a new inventor, small company, or start-up to have a prior art search done prior to marketing the invention or preparing a patent application.  In my opinion, the advantages of such a search far outweigh the risks or costs of doing so.


America Invents Act: Changes to Section 103

November 17, 2011

Section 103 of the Patent Act concerns the obviousness requirement for patentability.  The America Invents Act made several changes to this section.  The current version of section 103 reads as follows:

 (a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.


(1) Notwithstanding subsection (a), and upon timely election by the applicant for patent to proceed under this subsection, a biotechnological process using or resulting in a composition of matter that is novel under section 102 and nonobvious under subsection (a) of this section shall be considered nonobvious if—

(A) claims to the process and the composition of matter are contained in either the same application for patent or in separate applications having the same effective filing date; and

(B) the composition of matter, and the process at the time it was invented, were owned by the same person or subject to an obligation of assignment to the same person.

(2) A patent issued on a process under paragraph (1)—

(A) shall also contain the claims to the composition of matter used in or made by that process, or

(B) shall, if such composition of matter is claimed in another patent, be set to expire on the same date as such other patent, notwithstanding section 154.

(3) For purposes of paragraph (1), the term “biotechnological process” means—

(A) a process of genetically altering or otherwise inducing a single- or multi-celled organism to—

(i) express an exogenous nucleotide sequence,

(ii) inhibit, eliminate, augment, or alter expression of an endogenous nucleotide sequence, or

(iii) express a specific physiological characteristic not naturally associated with said organism;

(B) cell fusion procedures yielding a cell line that expresses a specific protein, such as a monoclonal antibody; and

(C) a method of using a product produced by a process defined by subparagraph (A) or (B), or a combination of subparagraphs (A) and (B).


(1) Subject matter developed by another person, which qualifies as prior art only under one or more of subsections (e), (f), and (g) of section 102 of this title, shall not preclude patentability under this section where the subject matter and the claimed invention were, at the time the claimed invention was made, owned by the same person or subject to an obligation of assignment to the same person.

(2) For purposes of this subsection, subject matter developed by another person and a claimed invention shall be deemed to have been owned by the same person or subject to an obligation of assignment to the same person if—

(A) the claimed invention was made by or on behalf of parties to a joint research agreement that was in effect on or before the date the claimed invention was made;

(B) the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and

(C) the application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement.

(3) For purposes of paragraph (2), the term “joint research agreement” means a written contract, grant, or cooperative agreement entered into by two or more persons or entities for the performance of experimental, developmental, or research work in the field of the claimed invention.

Section 103 is amended by the America Invents Act to delete subsections (b) and (c).  New section 103 reads as follows:

A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.

The main differences between new section 103 and current section 103(a) is the timing of the determination of obviousness.  Under current law, obviousness is determined by what one of ordinary skill in the art understood at the time of the invention.  New section 103 shifts the timing of this determination to “before the effective filing date of the claimed invention.”  This makes sense because the law also changes the US from a first-to-invent to a first-to-file regime.  Obviousness will now be determined at the time of filing rather than the time of invention.

Why strike subsections (b) and (c) from section 103?

Section 103(b) concerns non-obviousness of biotechnological inventions, specifically to biotechnological processes using novel and non-obvious compositions of matter.  This subsection provides a way to narrow the prior art available against the process claims if an applicant includes such claims in an application containing claims to the patentable compositions of matter.  This subsection is deleted by the America Invents Act.

Section 103(c)

Section 103(c) removes certain prior art that may be used against claims for obviousness purposes.  Subject matter that would qualify as prior art under section 102(e), (f), or (g) may not be used to reject claims for obviousness if the prior art and the application or patent were assigned to the same entity, subject to an application of assignment to the same entity, or the subject of a joint research agreement.  The determination of common ownership, obligation, or agreement is determined at the time of the invention.

Prior art under section 102(e) is patents or published applications that were filed before the invention date of the claimed subject matter, but that issue or publish after the filing date.  Subsection (f) concerns situations where the inventor himself did not invent the subject matter sought to be patented.  Subsection (g) concerns interferences or situations with near simultaneous invention.  Under current section 103(c), provided the prior art and claim at issue meet the ownership or research requirement, these may not be used for obviousness purposes.

Don’t worry, Congress didn’t take away this safe harbor provision.  Instead, it was greatly expanded.  Under new section 102(b)(2)(C), a patent or published application may not be used as prior art against a claimed invention if “the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person.”  Subsections (c) and (d) make clear that Congress intends this provision to apply not only to commonly owned patents and applications, but also to those that are the subject of a joint research agreement.  Thus, patents and published applications that are commonly owned, subject to a common assignment obligation, or the subject of a joint research agreement are not available as prior art period:  neither for obviousness nor novelty purposes.

Given the many provisions of the Act that expand the definition of prior art, it is nice to see one that reduces it.  This provision would seem to benefit larger entities that have multiple patents and applications, without really providing much benefit to smaller organizations or individuals.


In an issue previously addressed by IPWatchdog, there may be the opportunity to re-patent certain inventions that do not have 102(a)(1) prior art.  In order to re-patent the subsequently filed identical application would need to be re-filed prior to the publication or patent issuing so that the publication/patent of the first filed application will not be prior art under 102(a). 

For certain inventions such as pharmaceuticals where millions of dollars are at stake, it is virtually certain that re-patenting will be attempted.  This could permit patent extensions of 18 months or more on certain inventions.  This, and certain other ambiguities in the poorly worded Act, will require interpretation by the Federal Circuit or clarification by Congress.  It may be years before these provisions are clarified.

These provisions go into effect for applications filed 18 months after the effective date of the Act or March 16, 2013.

DuMont Withdraws; Richard Taranto is Next Nominee

November 11, 2011

Edward DuMont requested that his nomination to the Federal Circuit be withdrawn.  It was clear that after 19 months of inactivity by the Senate Judiciary Committee that “opposition from one or more members of the Committee minority” prevents his nomination from moving forward.  Given that Democrats control the committee and the Senate, it seems unlikely that the simple opposition of one or more Republicans could prevent DuMont from even getting a hearing.

Critics will argue that the opposition results from the fact that DuMont would have been the first openly gay appeals court judge.  It seems more likely that there was a problem in his background check.  Committee member Sen. Charles Grassley (R-IA) intimated that there were “questions about his background.”  Given that the committee is chaired by Sen. Patrick Leahy (D-VT), it seems unlikely that simple political opposition is the reason that he has never scheduled a hearing.  It’s too bad that we’ll probably never know the real reason.

Richard Taranto

Pres. Obama has now nominated Richard Taranto as a replacement for the DuMont nomination.  Taranto is a partner at the Washington, D.C. law firm of Farr & Taranto.  He clerked for Judge Robert Bork on the DC Circuit and Justice Sandra O’Connor on the Supreme Court.  He spent several years in the Solicitor’s Office during the 1980s.

Taranto’s practice specializes in appellate litigation.  As reported by Patently-O, Taranto has significant experience in intellectual property cases, both at the Federal Circuit and the Supreme Court.

He has participated in dozens of Federal Circuit patent appeals, including several Rambus cases, Verizon v. Cox, Lucent v. Gateway, Syngenta v. Monsanto, and others. Mr. Taranto has argued three IP cases before the U.S. Supreme Court: MGM v. Grokster (contributory copyright infringement), Warner Jenkinson v. Hilton Davis (patent law doctrine of equivalents), and Two Pesos v. Taco Cabana (trade dress infringement). Westlaw lists Mr. Taranto as counsel in over 90 reported court decisions. He has taught a variety of classes as an adjunct professor, including patent law at Harvard in 2002.

Evan Wallach Unanimously Confirmed to Federal Circuit

November 8, 2011

The Senate voted 99-0 to confirm Judge Evan Wallach to the Federal Circuit.  Wallach becomes the 11th member of the court that still has a vacancy.  Judge Wallach does not have signficant intellectual property experience.  He does bring significant experience in international trade, having been a judge on the Court of International Trade since 1995.  He is a veteran of the Vietnam War and served as Judge Advocate General in the Army and National Guard.

Meanwhile, Edward Dumont’s nomination continues to languish in the Judiciary Committee where it has been for 19 months.  No hearing for Wallach is scheduled.  Until this nomination is considered by the Senate or withdrawn by Pres. Obama, the Federal Circuit will remain one seat short, a victim of partisan politics.

Commissioner Stoll to Retire; To Be Replaced by Deputy Commissioner Focarino

November 2, 2011

Hal Wegner is reporting that Commissioner for Patents, Robert L. Stoll, will retire from the PTO at the end of the year.  

Stoll had replaced Jon Doll as Commissioner for Patents in October 2009.  He joined the PTO as a patent examiner in 1982 before moving to the aministrative side of the PTO in 1994 as Executive Assistant to the PTO Director.  In 1995, he became Administrator of the Office of Legislative and International Affairs.  In 2002, he became director of the Office of Enforcement, and in 2007 the Dean of Training and Education.

Deputy Commissioner for Patents Margaret (Peggy) Focarino will likely be tapped to replace Commissioner Stoll.  Focarino joined the PTO as a patent examiner in 1977 before moving to the Senior Executive Service in 1997.  In January 2005, Focarino became Deputy Commissioner for Patent Operations before being promoted to her current position in 2009.