Page 1
Conducting and Analyzing Prior Art SearchesStrategies for Validity, Patentability, Infringement, FTO and State-of-the-Art Searches
Today’s faculty features:
1pm Eastern | 12pm Central | 11am Mountain | 10am Pacific
The audio portion of the conference may be accessed via the telephone or by using your computer's
speakers. Please refer to the instructions emailed to registrants for additional information. If you
have any questions, please contact Customer Service at 1-800-926-7926 ext. 1.
WEDNESDAY, FEBRUARY 27, 2019
Presenting a live 90-minute webinar with interactive Q&A
Thomas L. Irving, Partner, Finnegan Henderson Farabow Garrett & Dunner, Washington, D.C.
Christopher C. Johns, Esq., Finnegan Henderson Farabow Garrett & Dunner, Washington, D.C.
Stephanie Curcio, Esq., Co-founder, Legalicity, Toronto, Canada
Kim Jordahl, Esq., Founder, KSJLaw, Signal Mountain, Tenn.
Page 2
Tips for Optimal Quality
Sound Quality
If you are listening via your computer speakers, please note that the quality
of your sound will vary depending on the speed and quality of your internet
connection.
If the sound quality is not satisfactory, you may listen via the phone: dial
1-866-570-7602 and enter your PIN when prompted. Otherwise, please
send us a chat or e-mail [email protected] immediately so we can address
the problem.
If you dialed in and have any difficulties during the call, press *0 for assistance.
Viewing Quality
To maximize your screen, press the F11 key on your keyboard. To exit full screen,
press the F11 key again.
FOR LIVE EVENT ONLY
Page 3
Continuing Education Credits
In order for us to process your continuing education credit, you must confirm your
participation in this webinar by completing and submitting the Attendance
Affirmation/Evaluation after the webinar.
A link to the Attendance Affirmation/Evaluation will be in the thank you email
that you will receive immediately following the program.
For additional information about continuing education, call us at 1-800-926-7926
ext. 2.
FOR LIVE EVENT ONLY
Page 4
Program Materials
If you have not printed the conference materials for this program, please
complete the following steps:
• Click on the ^ symbol next to “Conference Materials” in the middle of the left-
hand column on your screen.
• Click on the tab labeled “Handouts” that appears, and there you will see a
PDF of the slides for today's program.
• Double click on the PDF and a separate page will open.
• Print the slides by clicking on the printer icon.
FOR LIVE EVENT ONLY
Page 5
DISCLAIMER
• These materials have been prepared solely for educational and entertainment
purposes to contribute to the understanding of U.S. intellectual property law.
These materials reflect only the personal views of the authors and are not
individualized legal advice. It is understood that each case is fact specific,
and that the appropriate solution in any case will vary. Therefore, these
materials may or may not be relevant to any particular situation. Thus, the
authors, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP (including
Finnegan Europe LLP, and Fei Han Foreign Legal Affairs Law Firm), LEGALICITY,
and KSJLAW cannot be bound either philosophically or as representatives of
their various present and future clients to the comments expressed in these
materials. The presentation of these materials does not establish any form of
attorney-client relationship with these authors. While every attempt was
made to ensure that these materials are accurate, errors or omissions may be
contained therein, for which any liability is disclaimed.
5
Page 6
Outline
I. Prior art searches
A. Patentability
B. Validity
C. FTO(infringement)/clearance/due diligence
D. State of the art
E. Assignment/Inventorship/Ownership
II. Structuring and conducting the search
A. Purpose
B. Timing
C. Scope
D. Searching non-English language patents/applications
E. Using AI tools such as Natural Language Processing and Machine Learning
III. Analyzing and presenting search results
6
Page 7
Key Questions For Today’s Discussion
• What are the critical considerations when determining what,
when and where to search?
• What are the critical components of an effective search
strategy, analytical process and follow-up steps to ensure a
successful patent application?
7
Page 8
Enactment: Sept. 16, 2011
PCT Filing
First to Invent System Applies
Prior Art Search Under the Correct Law
“First To Invent” System or “First Inventor to File” System? (see SEC. 3(n)(1)(A))
PCT Filing
Priority Date
Enactment: Sept. 16, 2011
Effective Date: March 16, 2013
Priority Date
“First Inventor to File” System AppliesPCT Filing
Enactment: Sept. 16, 2011
Scenario 1: no claims entitled to priority dateScenario 2: all claims entitled to priority dateScenario: 3: at least 1 claim not entitled to priority date
8
Page 9
Prior Art Searches: Why?
1. Patentability (AIA’s post-grant proceedings);• Patentee
• Petitioner
2. Validity (U.S. district court or International Trade
Commission investigation);
3. Freedom to operate (infringement);
4. Patenting process (state of the art); and
5. Due diligence related to patent licensing or patent
acquisition opportunities.
9
Page 10
Patentability
• Prior art that raises “substantial likelihood” that one or
more claims are unpatentable under a Phillips claim
construction, no presumption of validity, and
preponderance of evidence standard.
• Direct search to begin at a time before the first priority
application for potential priority chain breakers.
• Searcher needs to know proper choice of law: pre-AIA and
AIA prior art.
10
Page 11
Validity
• Identify prior art that could be used against target patents in
litigation.
• Identify prior art that potentially invalidates one or more
claims are invalid under a Markman/Phillips claim construction
standard, presumption of validity, and clear and convincing
evidence standard.
• Direct search to begin at a time before the first priority
application for potential priority chain breakers.
• Searcher needs to know proper choice of law: pre-AIA and AIA
prior art.
11
Page 12
Freedom to Operate (Infringement)
• Prior art that raises issue for either an AIA post-
grant proceeding or district court litigation.• Searcher needs to know proper choice of law: pre-AIA and
AIA prior art.
‒ Identify patent roadblocks.
‒ Identify potential competitors.
‒ Seek out licensing or partnership opportunities.‒ Consider JRA possibilities under AIA (in place by effective
filing date).
12
Page 13
Patenting Process
• Information needed:
• Good summary of invention disclosure;
• Draft patent claims;
• Prior art aware of (?); and
• Inventor(s) name(s).
• Searcher needs to know proper choice of law: pre-AIA and
AIA prior art.
13
Page 14
Due Diligence
• Freedom to operate
• Scope/Validity/Patentability/Enforce-
ability
• Inventorship/Ownership/Transferability
14
Page 15
Freedom-to-Operate• Purpose
– Identify patent roadblocks– Identify potential competitors– Seek out licensing or
partnership opportunities
• Coverage– Patent documents
• Focus on claims
– Countries where company intends to practice (sales or manufacturing)
– Limited to non-expired patents or pending applications
15
Due Diligence: Freedom to Operate
and Validity/Patentability Searches
Validity• Purpose
– Evaluate strength of target patents– Identify prior art that could be used
against target patents in litigation
• Coverage– Patent documents
• Entire disclosure– Non-patent publications
• Scientific articles• Theses• Conference abstracts
– Worldwide– Documents published or filed before
relevant priority date(s) of target patents
– Acts– Internet documents
Page 16
Due Diligence: Ownership
• Inventorship also has ownership implications because in the U.S., the
inventor is the first owner of a patent.
• Ownership may have standing implications.
• Initially, check USPTO assignment records.
• Assignment Division page of website.
• Order copies of recorded assignments.
• For all patents and applications, not just key ones.
• Review recorded assignments and confirm that all named inventors have
assigned all rights to Target.
16
Page 17
• There might be “hidden“ co-owners among the
inventors.―Especially co-inventors from academic institutes or
those who were not employees of the Target company!
• If the original inventorship designation does not
correspond to the final designation, compare the
original set of claims with those finally granted.―Could be a change of inventorship due to the filing a
divisional application.
Ownership: Potential Pitfalls
17
Page 18
• What else to look for?
― Determine whether march-in rights might be lurking.
― Arises frequently in federal government-funded research
(e.g., NIH, DOE, USDA).
― Bayh-Dole Act – 35 USC §§ 201-212 (esp. § 203); 37 CFR § 401 ― Inventions must be reported to U.S. Government.
― Must affirmatively elect to retain title.
― Failure to properly report and elect can result in loss of rights.
Campbell Plastics Engineering & Mfg, Inc. v. Brownlee, 389 F.3d
1243 (Fed. Cir. 2004).
― Must grant U.S. government an irrevocable, nontransferrable,
royalty-free, nonexclusive license.
Due Diligence: Ownership
18
Page 19
STRUCTURING AND CONDUCTING A SEARCH:
Tips For Cost-Effectively Finding The Most Pertinent Information
19
Page 20
The Objective Dictates the Timing
• State of the Art: Before undertaking a resource intensive
development program – or never?
• Patentability: Before a specification and claims are drafted.
• Freedom to Operate: Before significant funds are invested.
• Ownership: When considering entering into an agreement or filing
a lawsuit.
• Invalidity: After a patent of concern issues.
20
Page 21
The Objective Can Also Dictate the Scope
• State of the Art: Any evidence, including publications of any
kind, commercially available products, public use, etc.
• Patentability: Ibid, publicly available prior to the earliest
priority date of the claimed invention.
• Freedom to Operate: Issued and in force patents in the
jurisdictions of interest.
• Ownership: Assignment/inventorship investigations.
• Invalidity: Depends on the forum/audience – some post grant
proceedings require printed publications.
21
Page 22
Where To Look?
• US Patents and Applications• USPTO.gov, Google patents, freepatentsonline.com
• Foreign Patents and Applications• Espace.net, WIPO’s patentscope
(https://patentscope.wipo.int/search/en/search.jsf)
• AU, CA, UK, IN, IL, KR, and NZ have searchable databases with
varying amounts of information/documents accessible.
• Publications• Dialog, websites of publishers, dissertation.com, IEEE
• Chemical Structures and DNA Sequences• CAS, PUBCHEM, ChemSpider.com, chemnavigator.com
22
Page 23
https://www.youtube.com/watch?v=kFBDn5PiL00
23
Page 24
Be Careful when Relying on Translations
• Ether and Ester are apparently interchangeable in
CN.
• “There is no corresponding word for distal in
Japanese.”
24
≠
Page 25
Where to Look?The most likely places, first…
• Your client/inventor
• They know their corporate and individual competitors.
• They know what they themselves have published/patented.
• They are often aware of what others in the field have published.
25
Page 26
Where to Look? There is more than 1 way to invalidate a patent
• Cover page issues.
• Incorrect inventorship.
• Nonassigning inventor.
• Validity of priority claim.
• References.
― Were all cited considered?
― Did Applicant cite any?
• Declarations on file that construe the art, data, or
priority claim.
26
Page 27
How?
• Name and Assignee searches
• Keyword searches
• Structure or sequence searches
• Class searching
27
Page 28
How?
• Class Searching
• Manual of Patent Classification
https://www.uspto.gov/web/patents/classification/selectnumwithtitle.htm
• Classes/subclasses identified on the target patent
28
Page 29
How?
• Once you’ve narrowed in on your target, refine your
search strategies according to your best hits.
• Forward and back citations.
• Additional names or assignees not previously searched.
• Synonyms.
29
Page 30
How Long?
• If you find nothing, you are looking in the wrong places or using
the wrong terms.
• When you start coming across the same relevant documents from
a variety of directions, you have exhausted your current
strategies.
30
Page 31
Managing Expectations -Nebraska Senator Ernie Chambers sued
God in 2007
• Suit alleged that the Defendant “directly and proximately has
caused, inter alia, fearsome floods, egregious earthquakes,
horrendous hurricanes, terrifying tornados, pestilential
plagues….”
• Suit requested a “permanent injunction ordering Defendant to
cease harmful activities and the making of terroristic threats.”
• Though Plaintiff argued that God is omnipresent, the suit was
dismissed after it could not be proven that God had been
afforded effective service of process “because of his unlisted
home address.”
31
Page 32
USING AI TOOLS SUCH AS NATURAL LANGUAGE
PROCESSING AND MACHINE LEARNING
32
presented by
Page 33
What Makes Prior Art Search Difficult?
33
Too much jargon
VOLUME COMPLEXITY
Too many patents
Page 34
What Makes Prior Art Search Difficult?
34
WIPO’s Director General on AI and IP (video):
“[W]e are not going to be able to deal, as a
world, with this volume of data and this
complexity of data without applications based
on Artificial Intelligence.”
List of AI initiatives in IP offices around the globe
Page 35
What Makes Prior Art Search Difficult?
35
USPTO’s Request for Information (September 2018):
“Search has become an increasingly challenging aspect of patent examination”
“There is an exponential growth of information for search and the examiner may be
searching for related information to something that does not exist during patent
prosecution.”\
“Language matters and terms evolve. Patent prior art search needs categorization and
context. Synonyms for keywords are technology specific.”
“Applicants can be their own lexicographer, defining terms used within the application.
Innovation often spurs new words and phrases beyond common vocabulary.”
Challenge to Improve Patent Search With Artificial Intelligence
Page 36
Can We Use AI To Improve Prior Art Search?
36
Yes! It can help with categorization and context (linguistic nuance)
But what do we mean by Artificial Intelligence?
Machine Learning (ML)
Learning and improving based on real-world examples
Natural Language Processing (NLP)
Understanding and interpreting human language
Page 37
Can We Use AI To Improve Prior Art Search?
37
AI can learn the semantics of patent-specific language from millions
of examples.
This produces word representations
in a vector space.
(source)
(source)
Page 38
Can We Use AI To Improve Prior Art Search?
38
These word vectors make it possible to account for technology-specific
language variation.
Page 39
Can We Use AI To Improve Prior Art Search?
39
The word vectors also make it possible to handle new words not found
in the current patent vocabulary.
bed-shaped(not found)
rectangular-shaped(found)
Page 40
Example of an AI Patent Search Tool
40
The motivation for our product, NLPatent, one of several commercially available semantic search tools,is best described in USPTO’s RFI:
Patent examiner time is limited, so they need better results, not more results.
The components of a better prior art search include classification, ranking or
relevancy, combined with context to help examiners make their determination of
non-obviousness and novelty.
(1) CPC Classification
(2) Prior Art Search
(3) Prediction of Patentability
Page 41
What Is the Value of AI, Exactly?
41
Importantly, it does not replace a human searcher!
semantic
search
traditional
search
all relevant prior art
Page 42
What Is the Value of AI, Exactly?
42
Stories from real users about the efficacy of semantic search:
It helped me find a knockout reference I would have
otherwise missed.
I’ve been using it as a “sanity check” to validate searches I’ve outsourced.
I like to start my searches with AI because it gets me more than halfway
there very quickly.
Page 43
What Is the Value of AI, Exactly?
43
A B C D E F G H
Top 50 avg % 32.0 28.5 26.7 44.5 38.0 28.4 28.6 24.8 31.4%% at
least 1 37.0 33.0 38.0 28.0 42.0 36.0 32.0 29.0 34.4%
% all 28.0 24.0 19.0 26.0 34.0 22.0 25.0 21.0 24.9%
Top 100 avg % 45.4 36.0 33.7 53.6 43.0 31.2 31.9 28.2 37.9%% at
least 1 53.0 43.0 44.0 35.0 48.0 40.0 36.0 33.0 41.5%
% all 39.0 30.0 27.0 30.0 38.0 24.0 28.0 23.0 29.9%
Top 200 avg % 59.0 44.0 39.1 60.7 58.6 44.4 45.4 38.2 48.7%% at
least 1 65.0 51.0 49.0 39.0 65.0 53.0 51.0 45.0 52.3%
% all 53.0 38.0 31.0 34.0 53.0 37.0 40.0 31.0 39.6%
Results of empirical study on semantic patent search
Page 44
What Is the Value of AI, Exactly?
44
Methodology
800 random samples
100 from each CPC section (A to H)
US patents issued in 2017
Looked for prior art cited for s. 102
Noted whether documents were found in
top 50/100/200 AI results
Measured % of Examiner’s references
found by AI
We compared our AI’s output with prior art cited by a USPTO
patent examiner to see if there was any overlap. (learn more)
Results
30-50% of prior art found
At least one document found
34-52% of the time
Every single document found
25-40% of the time
Page 45
Specific Challenges for AI in Patent Search
45
(1) Database coverage
• How to combine prior art from multiple jurisdictions,
not just the US but also EP, CA, etc.
(2) Foreign prior art
• How to capture the semantics of prior art written in a
language other than English
(3) Non-patent literature
• How to incorporate text that lacks the characteristics of
patents, e.g. a consistent format & CPC classifications
Working with large collections of complex textual data:
Page 46
Specific Challenges for AI in Patent Search
46
(1) Validity
(2) Freedom to operate
(3) State of the art
(4) Due diligence
Making the product useful for different purposes, not only for
assessing patentability:
Page 47
What’s Next?
47
Going beyond prior art search to predicting patentability.
We work with researchers at the University of Toronto
to predict the likelihood of a patent application being
rejected on various grounds.
Our AI can already predict the likelihood of a s. 101 rejection
(non-patentable subject matter) with up to 89% accuracy.
Page 48
Analysis of Search Results
48
48
Page 49
Patentability: Analyzing the Search Results
• Patentee
• Will the claims under a Phillips construction stand up against the
prior art found in the search?
― Anticipation;
― Nonobviousness;
― Consider whether §112 chain of reference solid;
― §112 issues for PGRs.
• If there is a problem,
― Can a narrower claim could be presented?
― Ex parte reexam?
― Reissue?
― Pending continuation application?
49
49
Page 50
• Petitioner
• Other side of the coin – substantial likelihood of
unpatentability.
― At present, IPR has been a petitioner-friendly forum.
― Even if cannot knock out all claims, can you knock out enough
claims to eliminate any FTO problem for the Petitioner?
50
50
Patentability: Analyzing the Search Results
Page 51
Source: Excerpt from DocketNavigator 2018 Year in Review: Patent Litigation Special Report, p. 4.
AIA Post-Grant Proceedings Reality
Many Will Face
51
51
5456
6103
5018
5786
4514
4027
3599
111
792
1677 1798 1758 1799 1718
0
1000
2000
3000
4000
5000
6000
7000
2012 2013 2014 2015 2016 2017 2018
District court patent litigation cases filed PTAB petitions filed
Page 52
IPR Institution Rate is Nearly 60%
Granted5801058%
Denied4250642%
52
Source: Excerpt from DocketNavigator 2018 Year in Review: Patent Litigation Special Report, p. 41.
Page 53
IPR Claim Cancellation Rate is High
Source: https://www.finnegan.com/en/insights/blogs/america-invents-act/special-report-ptab-ipr-stats-over-time-q4-2013-q3-2018.html 53
53
Page 54
Validity: Analyzing the Search Results
• Consider results under standard of Phillips claim construction,
clear and convincing evidence of invalidity, and presumption of
validity.
• Plethora of CCPA/Federal Circuit case law to guide the
analysis with respect to search results uncovered.
• Consider noninfringement, obviousness-type double
patenting, substantive §112 indefiniteness/written
description/enablement attacks, subject matter eligibility
attacks.
54
54
Page 55
FTO: Analyzing the Search Results
• Is there a way around prior art that raises issue for either an
AIA post-grant proceeding or district court litigation?
‒ Is there a way to clear potential competitors?
‒ Are there licensing or partnership opportunities?‒ Consider JRA possibilities under AIA (in place by effective
filing date).
• If there is an issue that can be resolved by:
• Ex parte eexam?
• Reissue?
• Pending continuation application?
55
55
Page 56
• Identify and characterize material IP issues for each product.
• Determine scope of protection by closest competitor IP.
• Evaluate, manage, and reduce risks.
• Take appropriate actions at the legal, business, and R&D
levels.
• Deal with small problems before they grow big and with big
problems immediately.
56
56
FTO: Analyzing the Search Results
Page 57
• Does the search result affect your monetization program?
• Is it truly infringed (claim construction, prosecution disclaimers)?
• Design-around possibilities?
• Is patent valid/patentable and enforceable?
• Was ID’d patent known to company seeking to monetize?• Does the company have a license or has it obtained an opinion?
• Who is patentee (major competitor v. non-player in market)?• Patentee’s enforcement history (i.e. license, litigate, etc.).
• Potential damages/injunction relief?
• Can patent be licensed or purchased?
• What if top art is an Application? • Check foreign file histories (may be farther along).
• Does company have patent leverage?
57
57
FTO: Analyzing the Search Results
Page 58
Patenting Process: Analyzing the Search Results
• Analysis of patentability search results.
• Novelty;
• Nonobviousness.
58
58
Page 59
Due Diligence: Analyzing the Search Results
▪ Evaluate strength/weaknesses of target patents.▪ Analyze search results for FTO, inventorship/ownership, and
invalidity/unpatentability.
▪ Assess and manage risks.
▪ Identify value and expose overvalued/undervalued assets.
▪ Provide information to those responsible for valuing the IP,
which could impact the transaction in terms of both price
and structure.▪ If search results tend to be negative, consider reduction in
acquisition price.
59
59
Page 60
• For each patent identified during FTO search, compare claims
to:
• Products/services to be acquired/licensed
• Future products/services
• Questions for target:
• Any technical clarifications
• Did they know of relevant patent? Opinions?
• Licenses to relevant patent?
60
60
Due Diligence for FTO: Analyzing the Search
Results
Page 61
• Assess Risk Posed by Identified 3rd Party IP
• How easy is it for competitor to identify potential infringement?
― Obvious feature of product versus step in secret manufacturing process
• How clear is the infringement of the construed claims?
― Literal infringement
― Doctrine of equivalents
• Who is patent owner?
― Major competitor versus non-player in market
― Patent enforcement history (litigation, granting licenses)
― Small start-up versus large established company
• What is duration of potential infringement?
― Patent term versus launch or start date of your infringing product or activity
• What are expected costs of infringement?
― Legal costs for litigation (including damages), settlement or licensing61
61
Due Diligence for FTO: Analyzing the Search
Results
Page 62
• Will the patent cover the product?
• Are the patents valid and enforceable?
• Analyze search results:
• Assess scope
• Assess prior art
• Assess disclosure
62
62
Due Diligence for
Scope/Validity/Enforceability:
Analyzing the Search Results
Page 63
• Issues to look for:
• Narrow claims
― May not cover products;
― Vulnerable to design arounds.
• Broad claims
― Potential prior-art issues;
― Enablement issues.
• Ambiguous claims
― Indefiniteness;
― Noninfringment positions.
63
63
Due Diligence for
Scope/Validity/Enforceability:
Analyzing the Search Results
Page 64
• Now that you understand the scope of the target claims,
compare the claims to the current and future
products/services and likely design-arounds.
• Identify any additional information needed.
• Assess who will infringe the claims.
• A single entity?
• A competitor or a customer?
• Would you even know?
64
64
Due Diligence for
Scope/Validity/Enforceability:
Analyzing the Search Results
Page 65
• Prior art known to those with duty of candor;
• Failure to cite related applications;
• Gaps in citation of prior art between U.S. and foreign applications ;
• Declarations or data submitted in prosecution;
• Inconsistent materials/arguments in co-pending applications, other
proceedings, or litigations; and
• Examples in past tense.
65
65
Due Diligence for
Scope/Validity/Enforceability:
Analyzing the Search Results
Page 66
• Has anyone else weighed in?
• Has anyone challenged validity/patentability/enforceability?
― Check prior court rulings;
― Settlement agreements;
― Administrative proceedings; and
― Existence of opinions.
66
66
Due Diligence for
Scope/Validity/Enforceability:
Analyzing the Search Results
Page 67
• Watch for issues under 35 U.S.C. §262:
“In the absence of any agreement to the contrary,
each of the joint owners of a patent may make,
use, offer to sell, or sell the patented invention
within the United States, or import the patented
invention into the United States, without the
consent of and without accounting to the other
owners.”
67
67
Due Diligence for Ownership:
Analyzing the Search Results
Page 68
• Administrative proceedings at USPTO.• Pre-issuance submission
• Certificate of Correction
• Continuation application
• Narrowing reissue
• Broadening reissue
• Ex parte reexamination
• Inter partes review (IPR)
• Post-grant review
• Litigation?
68
68
Due Diligence: Analyzing the Search Results
Remedial Action?
Page 69
Thank you!
Kim Jordahl Stephanie [email protected] [email protected]
Tom Irving Christopher [email protected] [email protected]
69
69