US-Based Validity Searches

Among other requirements, the U.S. patent laws provide that an invention must be novel and nonobvious over the prior art.  A patent validity search or patent invalidity search is a prior art search that tests whether a granted patent met these provisions.

These two searches are identical but have opposing objectives.  Both seek patent-invalidating prior art and are sometimes lumped together and referred to as validity searches.

A patent invalidity search is a defensive strategy by an entity accused of patent infringement.  This search tries to show that the patent office granted the patent in error because it was neither novel nor nonobvious over the prior art.

A patent validity search is an offensive strategy by a patent owner who wants to ensure a patent is enforceable before asserting or transacting it.  The search tries to show that no patent-invalidating prior art exists.

Choosing a Search Provider

Clients face a wide array of choices when needing a prior art search.  The options range from seasoned, solo professionals to large search firms to independents on Fiverr who lack English skills.  In the past, anyone could characterize themselves as a professional prior art searcher, although that is changing.

A decade of efforts to provide quality assurance to search clients came to fruition in 2018.  The Qualified Patent Information Professional (QPIP) certification requires candidates either to pass a two-day examination or document ten years of prior art search experience.  Our founder holds the QPIP credential.

The Goal of an Invalidity Search

The goal of a patent invalidity search is finding prior art useful in proving anticipation under 35 U.S.C. § 102.  Such patent-invalidating prior art meets every limitation of a targeted claim.

If locating § 102 art proves elusive, the fallback strategy is to find prior art for obviousness under 35 U.S.C. § 103.  The § 103 invalidity approach combines prior art to meet the claim limitations but is a difficult showing to make.

Evaluating a Prior Art Search

After the search is complete, clients need to assess its efficacy.  If the prior art search located anticipatory § 102 prior art, evaluation is straightforward.  The search was productive and the client has their needed prior art.

As sometimes happens, though, the prior art search finds only a patchwork of § 103 references.  Clients do not know whether § 102 prior art remains undiscovered.  An invalidity search is a bit like a hunt for buried treasure that might not exist.

If in doubt and the need is great, a client will often hire follow-up searches to find more prior art.  Indeed, we are often the second or third firm in succession to attack a patent.

Clients tell us they sometimes feel buyer's remorse after choosing a prior art search vendor.  Often, they succumbed either to the lure of low prices or technology hype.

Low-Priced Searches

Budgetary pressures sometimes compel a client to choose a search firm with the lowest fees.  But validity searches are not fungible, and expert searchers are not the cheapest.  Clients should be wary of firms pushing low fees.

Patent-invalidating prior art is the linchpin to a patent invalidity defense.  When the money at risk is ten thousand times greater than the search fee, shaving costs on the search is counterproductive.

When a client loses a case, nobody gets patted on the back for saving money on the search.  And if they win, nobody cares how much the search cost.  So, choose the best searcher.

Overselling AI-Assisted Search Tools

Clients sometimes fall prey to technology-based claims by vendors.  Database vendors tout their features like carnival barkers, and search firms echo those claims to clients.  But the hype outstrips reality.

The IP media pushes the use of artificial intelligence for prior art searches.  But a close reading shows that the sellers of AI (i.e., media advertisers) make most of the noise, not its buyers.

Prior art searching is far from the only field bombarded with AI hype.  Most so-called AI achievements need crucial human involvement.  Hyperbole litters the landscape.

Current AIs are idiots savants:  successful on narrow tasks, such as playing Go or categorizing MRI images, but lacking the generality and versatility of humans.  Each idiot savant is constructed manually and separately, and we are decades away from the versatile abilities of a five-year-old child. - MIT Technology Review, February 25, 2020

Artificial intelligence is useful for narrowly defined tasks, but patent searching is a challenging use case.  Most studies find AI helpful in determining relevant patent classifications but can do little else on its own.

The UK Intellectual Property Office recently reported that AI-assisted prior art searching still requires a human in the loop and is no substitute for human decision-making.  A March 2021 paper concurs.

The magic sauce of AI will not zero in on a patent-killing reference.   Choosing a vendor based on its AI capabilities is falling prey to hype.

Qualities of a Good Prior Art Searcher

A validity search can require a thorough review of thousands of references.  A good searcher can plow through 50,000 pages of documents at a brisk pace and miss nothing.  The review task requires concentration, dogged determination, and elite reading skills.  Short-attention-span types need not apply.

Skilled searchers know where to look.  They have spent years following the growth of an industry and its underlying technology.  Experience teaches whether a technology sector will first file a patent or publish a paper.

The best searchers understand patent claims and can collaborate with a litigator.  A search is more productive when the client can convey claim nuances.  The searcher can then focus on unearthing the needed technical features.

Search Offshoring

Some U.S. firms offshore their searches.  There are reports that firms have engaged in this practice without notifying clients.  Even with notice, the client may face a language barrier with overseas searchers.

Validity searching requires native English fluency.  Few foreign searchers can digest 50,000 pages at a pace comparable to native English searchers.  See Do you know English?  The challenge of the English language for patent searchers.

Offshore searchers also are unlikely to have any formal training in patent law.   Being ignorant of claim construction, a searcher may misinterpret claim language and launch misguided searches.

Offshoring Can Waive Attorney-Client Privilege

Even if a client receives notice, offshoring can jeopardize client confidentiality.  Courts may find that attorney-client privilege does not attach to communications with offshore searchers.  This finding may hold even if supervised by a U.S. attorney.  How enforceable is a confidentiality agreement in a loosely governed territory 8,000 miles away?

Will the foreign search backroom bother with a conflict check?  Or do these offshore shops work for anyone who requests it?  Ethical standards vary widely around the world.  Offshore searches can create traps for the unwary.

In the Line of Fire

We have been in the patent litigation line of fire (Link).  The impact of great invalidating art can be tremendous.  We know litigators work long hours and are under pressure to deliver results.  Choose a diligent searcher who understands what is at stake and will deliver case-changing prior art for you.