In the old days of patent prosecution, some IP attorneys would perform only a perfunctory prior art search—or forego a prior art search completely—with the rationale that determining whether a proposed invention infringed on prior art was the job of a USPTO patent examiner.
There are any number of reasons why that approach does not hold up in 2015, but here is a particular one to be aware of: if you do not perform a thorough prior art search, a rival may well do it for you. And unlike your own prior art search, theirs will be geared toward demonstrating that your claimed invention is unpatentable.
Among the many changes wrought by the America Invents Act of 2011 was the opportunity for third parties to weigh in on the patentability of a published patent-pending application. These preissuance submissions, as they are known, can be filed by any third party during a six-month window after the application is published. They also can be filed anonymously.
The introduction of preissuance submissions was ostensibly a boon to small companies and individual inventors. Those players may not be able to sustain the legal costs associated with post grant review, inter partes review or traditional patent litigation. Providing the ability to challenge patentability on prior art grounds before a claimed invention is protected by the presumption of validity may help level the playing field.
Of course, preissuance submissions are not restricted to use by small companies and individual inventors. In today’s intellectual property climate, every newly published patent application comes under intense legal scrutiny from a gallery of competing interests. This is particularly true for applications published in high technology art units. For patent applicants, the threat of preissuance submissions from well-financed and resourceful industry rivals places even more importance on conducting an extremely thorough prior art search before the submission of one’s application.
The good news for IP-driven companies is that preissuance submissions cut both ways. By using LexisNexis TotalPatent to search for Freedom to Operate (FTO) questions and LexisNexis PatentOptimizer to help draft with the proper claims once FTO has been established, patent professionals can find out about potentially infringing applications from rivals well before they receive patent protection.
With the right technology tools at your disposal, you now have the opportunity to conduct a more exhaustive prior art search on your competitors’ patents than they themselves have performed, with resulting competitive advantages for your company.