Friday, February 8, 2019

Prior Art Searching and the Inventor-Attorney Relationship

From the outside looking in, patent law may seem a counterintuitive tangle of legal tactics and linguistic gymnastics.  Consider the now infamous example of U.S. Patent No. 6,368,227, in which five-year old Steven Olson disclosed his method of swinging side-to-side on a swing, including an example in which the user may “produce a Tarzan-type yell while swinging in the manner described, which more accurately replicates swinging on vines in a dense jungle forest.”  The ‘227 patent has subsequently been cited as an example of the “broken system,” that is, of how U.S. law allows for ludicrous “inventions” to be patented.
What is even more concerning to patent seekers are inventions which may deserve patenting but, due to poor specification and claim structure stemming from an incomplete understanding of the prior art, ultimately go rejected or abandoned.  Indeed, it may seem a great injustice to the applicant that their useful and valuable intellectual property will go unprotected, even while little Steven can shake down his classmates for royalties.  To be completely fair to the USPTO, though, the allowed claims of the ‘227 patent were reexamined and duly rejected the following year.  This should help allay the fears of the cynics – clearly, Mr. Olson’s method had existed somewhere in the prior art.
But how can one be certain?   How does an aspiring applicant even begin to make such a determination?  The task may seem daunting, as the body of prior art constitutes an immense amount of material.  As of January 1, 2019, over 10.1 million patents have been granted by the U.S. Patent and Trademark Office.  That doesn’t even begin to cover abandoned and pending applications, foreign jurisdictions, and non-patent literature – all of which are valid prior art.     
A seemingly great divide in logical reasoning between inventors and attorneys presents a further obstacle.  For instance, even if a set of close publications are methodically tracked down, a person skilled in their art and motivated to patent their invention may see differences between their idea and every given prior art reference.  This can lead to a false sense of security among would-be patent applicants.  Any patent attorney will attest, however, that effectively distinguishing an invention from the prior art is not as straightforward as clarifying novel results; just because an idea is novel (in an absolutist sense of the word) doesn’t make it patentable.
However, this divide is not unbridgeable.  In fact, it may not be a divide at all, but rather two alternative, mutually complementary perspectives.  After all, both technical and legal considerations are necessary to obtaining that coveted Notice of Allowance.  An inventor and an attorney can therefore help one another by determining in tandem which pieces of prior art are points of concern.  This may take the form of a brief prior art search by the inventor with an eye for both their technical field and patentability, which can lay the groundwork for a further, more exhaustive prior art search by the attorney.
To that end, this is the first in a series of blog posts with a singular goal: how can an inventor effectively utilize their expertise to facilitate the prior art searching process?  The ensuing tutorials will detail preparatory steps that the inventor can take in assessing the prior art landscape in anticipation of disclosing their invention with an attorney.  From there, the attorney will be able to conduct a more rigorous search with an eye for a path to issuance in accordance with the law.  The hope is that when inventors are apprised of the fundamentals of properly distinguishing prior art in their technical field from their innovations, they may more fully provide attorneys with a rough picture as to the patentable space and thereby increase chances of allowance down the road.


Note that the views expressed herein do not represent the views of any law firm or client, and may not even represent the views of the author. This blog is NOT legal advice and is for informational purposes only. No attorney client relationship can be formed by reading this blog or using any of the information provided. The accuracy of the information provided has not been verified.