Conducting and Analyzing Prior Art Searches

Description

Prior art searching is a critical step in the U.S. patenting process and in evaluating whether issued U.S. patents will stand up under the rigors of the AIA's post-grant proceedings, U.S. district court litigation or an International Trade Commission investigation. Also, prior art searching plays a crucial role in assessing how freely a particular technology can be utilized in the U.S. and in performing due diligence related to patent licensing or patent acquisition opportunities.

The search, for example, may well be necessary for the U.S. patent applicant to be able to avoid potential risks of third-party U.S. patents and maximize patent protection concerning a specific product or invention. Knowing other relevant patented inventions or public disclosures allows for modifications to be made to enhance the chances of achieving meaningful, patentable and valid patent claims. Given the Supreme Court’s recent Helsinn holding affirming that even confidential commercial sales place an invention “on sale” under 35 USC 102, knowledge of the existence, content and timing of a client’s collaborations with third parties is critical to obtaining valid patent protection, while on the other hand, competitive intelligence of a competitor’s business dealings may provide valuable evidence of invalidity for blocking patent rights.

Counsel must formulate a strategic approach for the different types of searches recited above. Whether designing or commissioning a search, patent counsel needs to evaluate the scope and timing of the prior art search given the ultimate objective. There should be a plan in place to tackle the issues of what, when and where for effecting validity or freedom to operate searches, among others.

Further, counsel must be able to analyze and assess the search results to take the proper steps for a successful patent application, patent challenges and due diligence.

Listen as our authoritative panel of patent attorneys examines when, how, where and why to conduct various prior art searches, including validity, patentability, infringement, ownership, and FTO. The panel will discuss the differences and nuances in the different searches. The panel will also discuss the analysis and reporting of search results and offer best practices for conducting and analyzing prior art searches to increase the efficiency and effectiveness of your patent objectives. These best practices include using new AI technologies, which will be discussed as well.