Potential liability issues can arise for lawyers who perform or handle patent and trademark searches. Searches involve complex legal and technical analysis that requires careful documentation and client communication. An inadequate or negligent search could result in a malpractice claim if a pertinent patent is missed, leading to infringement claims or wasted R&D costs. While legal authorities provide little direct guidance, lawyers have duties of competence, diligence, and candor that require properly advising clients about search methodologies, limitations, and disclaimers in writing. Failure to conduct a reasonable search or keep clients informed may form the basis for a legal malpractice lawsuit.

1. Potential liability of lawyers
performing/handling patent and
trademark searches: the questions are
the answers
©Professor Jon R. Cavicchi, IP Librarian
11/1/12

2. Mixed audience

3. Looking through the keyhole at
problems lawyers can face dealing
with searches

5. The end is the beginning….
• Searching, outsourcing, analyzing,
handling patent & trademark data is
complex
– Uses and options are constantly
growing
• Direct legal authority very sparse
• Think many steps ahead before you
perform, outsource or handle patent &
trademark data
• At every step, stop and counsel the client
and put it in writing
• WITH ROBUST DISCLAIMERS!

6. Consistent with Standard Advice
• Keep Your Clients Informed
– (1) discussing, fully and candidly, upon initial consultation, the
services to be rendered, the terms of payment, and any
conditions to or problems raised by the engagement
• [The advantages and disadvantages of each search methodology should be discussed with
the client so that the client can make an informed choice about which methodology makes
the most sense for a particular technology.] 802 PLI/Pat 283
– (2) confirming all of this in writing to the client, preferably
receiving a signed acknowledgement from the client; and
• [Specifically, the disclaimers should address inherent limitations and potential deficiencies
of the clearance search that may have caused pertinent patents to be missed.] Id.
• Paul W. Vapnek, INTELLECTUAL PROPERTY LAW PRACTICE IN THE 1980'S: DEALING WITH
THE EXPECTATIONS OF A MORE INFORMED CLIENTELE, 14 AIPLA Q.J. 91 (1986)

7. Lawyers deal with searches in a
number of settings
• Prosecution
• Transactional work
• Litigation
• Handling IP business transactions
• In house counsel
• Outside counsel

8. Patents are legal, technical and
business documents

9. “Patent data is the greatest source
of competitive intelligence on earth”
• how companies can tap the asset values in intellectual
property to achieve board and shareholder objectives, we
pay particular attention to the use of patents to:
 Generate new revenues through licensing
 Boost earnings per share and total shareholder return
 Improve return on investment for R&D and seed
continuing innovation
 Raise corporate valuations and enhance equity and other
financing efforts
 Serve as the currency of mergers, acquisitions, and joint
ventures

10. PATENT LANDSCAPE
SEARCH
• Patent landscaping uncovers:
 Market opportunities for licensing
 Competitive technology trends
 Gaps in corporate patent portfolios
 Opportunities for entry into new markets
 Targets/risks for patent infringement litigation
 Opportunities for redirecting R&D efforts

11. Patent example: many types of
searches
• Patentability • Freedom to to operate
• Prior art • Family/corresponding
• Novelty • Right to make
• Pre-examination • Clearance
• Infringement • Justification
• Validity • Continuing
• Right to use • Patent Status

12. 28+ Post grating actions include...
• adverse decision • suits
• certificate of • reissue
correction • reexamination
• disclaimer • withdrawal
• delayed fee • assignment
• error correction
• expiration
• extensions

13. Patent Searching Terminology
is Messy!
• Lawyers, scientists, business, IP,
international development professionals
use labels without a common reference
vocabulary
• Leads to “semantic disconnect”
• Get as much detail as to the purpose and
nature of the search, analysis, report…

14. Raises so many questions to avoid
so many mistakes
• Whether to do a search
• When to do a search
• Who to perform the search: in house & outsourcing
• How to discover & deal with prior searches
• Disclosing searches
• Dealing with clients who forbid or strictly limit searches

17. Tick tock…time is of the essence
• Take off my patent research professor hat and
put on my librarian hat

18. First, the essentials…
Ethical and malpractice dimensions

19. Potential Legal Authorities
Pertinent to Searching
• State Ethics Rules & Opinions
• PTO Rules
• Rule 11 (and PTO equivalent) for trouble caused, not only to the
Court, but to the adversary who filed frivolous claims and failed
to conduct a reasonable pre-complaint inquiry into fact and law
that would have showed no basis for the litigation.
• Common law causes of action
– Malpractice
– Breach of contract

20. What are the potential ethical potholes:
the duties of a lawyer with searches
• Competence
• Loyalty/Representation
• Diligence
• Client communications
• Fees
• Independent judgment and candid advice
• Meritorious claims
• Candor
• Confidentiality
• Conflicts

21. Overlapping Rules to Consider
• Whose Rules Rule? Resolving Ethical Conflicts During
Representation of Clients in Patent Prosecution
Abstract:
This paper explores the conflict between the PTO Rules of Professional Conduct and the state rules of
ethics. This conflict is not readily apparent as a patent attorney would be justified in assuming that conduct
deemed ethical under the state requirements would be acceptable under the PTO ethics rules. However, the
PTO's "Duty of Candor" potentially presents the patent attorney with a seemly irresolvable conflict. An
overview of patent prosecution is included as well as a comparison of the of the ABA Model Rules of
Professional Conduct and the PTO Code of Professional Responsibility. We argue that the state rules of
ethics should dominate the practice of all law and should supersede enforcement of the PTO Duty of Candor
where conflicts arise during simultaneous patent prosecution.
Rose and Jessup, Wake Forest Univ., Public Law Research Paper No. 02-5

22. What do legal sources have to say?
• Disciplinary Opinions
• Ethics opinions
• State & Federal Cases
– Malpractice
– Breach of contract
• Jury Verdicts
• News
• Disclaimer: selective

23. Professor/Practitioner argues for
the ethical duty to search
Thus, to achieve greater specificity in claim drafting, pre-filing searching by
applicant is an implied new applicant duty under Festo.

24. No guidance from ethics sources

25. From the Desk of Prof. Hricik

26. Results?
• Malpractice actions
– Client who are injured by
• No search
• Inadequate search
• Resulting in
– Infringement
– R&D spent on inventions that are not novel

27. What is the Standard of Care?
• There appears to be no question that a patent attorney has a
duty to conduct a patent clearance search with that degree of
skill and knowledge normally possessed and exercised by an
attorney under the given circumstances.
• Thus, the critical issue in Carabotta is whether the patent
attorney satisfied the professional standard of care in
performing the search.
A. Samuel Oddi, PATENT ATTORNEY MALPRACTICE: AN OXYMORON
NO MORE, 2004 U. Ill. J.L. Tech. & Pol'y 1 (2004)

28. KGRM Case
• The legal malpractice suit was filed by Pierce Atwood in
federal court in Maine. In this suit, Edens alleged that KGRM
was liable for
– (1) negligently advising Edens that its device would not
infringe Golf Tech's patent, and
– (2) failing to diligently search for prior art and failing to
raise the defense of patent invalidity.
• William Jordan, Professional Liability Reporter,
(February 2010)
• An inadequate search may also give the client the false
impression that the technology is clear of patent risks.

29. • Malpractice actions in general have proliferated;
intellectual property lawyers, no less than other
lawyers, are targets for such suits.
• Malpractice actions have been based upon
allegations of negligent searching
• Paul W. Vapnek, INTELLECTUAL PROPERTY LAW PRACTICE IN THE 1980'S: DEALING WITH
THE EXPECTATIONS OF A MORE INFORMED CLIENTELE, 14 AIPLA Q.J. 91 (1986)

30. Some data from patent lawyer
malpractice insurers
Malpractice insurance premiums have shot upward
for attorneys over the past few years, but the
increase for patent attorneys has been especially
dramatic. Some patent firms are finding it hard to
come by malpractice insurance at any price.
http://www.bizjournals.com/seattle/stories/2004/05/17/story6.html

31. Patent Malpractice Suits A
Growing Threat
“What used to be a gentle law of practice which
involved close relationships between clients and
practitioners has been exploited of late,” said Sharinn,
who now practices with Baker & McKenzie LLP. “As
patents grow in value, if things do not go the way an
inventor wants, they will take the approach to recoup
money by suing, which is being handled by slip-and-fall
guys by and large.”
Patent Malpractice Suits A Growing Threat By Ron Zapata, Nov 14, 2007

33. Excellent source of content and
training on patent practice ethics,
malpractice, patent searching and
client opinion letters

34. Focus #1
Patent Prosecution

37. Does the U.S. Code or MPEP
require a patent search

38. To qualify for the new accelerated examination
program, applicant must: …8.
Conduct a pre-examination search

39. Patent professionals, academics &
policy experts debate this
endlessly

40. Applicant Responsibility
• “Applicants must take responsibility for
quality patent preparation and prosecution
and not rely solely on examiner”
• “Corporate filers should conduct a pre-filing
search citing the most relevant art to the
examiner”
– Mark Adler, IPO President, “Quality Patent Examination and Prosecution,” Trilateral Public Users Conference,
Washington, D.C., November 8, 2007

41. Duty of Disclosure
• Must disclose any KNOWN relevant art
• Duty of candor
• Inequitable conduct
• Fraud upon the patent office

43. Outsourcing - 1019 PLI/Pat 185
Once the law firm has satisfied itself that the lawyers and non-lawyers
identified by the intermediary are competent to perform the work, the law firm
must ensure that it sets up supervisory procedures that will ensure proper
service of the client and compliance with ethical standards.
Supervision by the law firm and its lawyers should include (i) ensuring that the
foreign worker understands the patent searches to be conducted and
the information necessary to conduct those searches; (ii) discussing with the
foreign workers any relevant legal or ethical rules and constraints; and (iii)
gaining an understanding of the foreign firm's practices and procedures
with respect to conducting the patent searches and memorializing the results.
The law firm should tailor procedures relevant to the patent work that needs to
be performed for supervision of foreign legal support to the education and
training of the foreign workers.
The supervising lawyer should consider steps to avoid compromising
its client's confidential information

45. Implications of AIA
• Various provisions of the AIA further suggest that it will
become increasingly important for many applicants to keep
tabs on potentially material prior art and on the activities of
their competitors.
• Many patent applicants prefer not to look for prior art, for
example, to avoid searching costs and the potential duty to
disclose their findings to the Patent Office.
• Under the AIA, however, there may be at least three
compelling reasons to more diligently find and disclose
relevant art to the PTO.
– Daniel J. Sherwinter and Patrick M. Boucher, THE AMERICA INVENTS ACT, 41-JAN
COLAW 47 (2012)

46. • “[The] inequitable conduct defense is frequently pled, rarely proven, and
always drives up the cost of litigation tremendously.”
• Under the AIA, an applicant apparently can request supplemental
examination at any time of any potential prior art, not just patents or
printed publications.
• In exchange, patents will not be held unenforceable on the basis of
information considered, reconsidered, or corrected in supplemental
examination.
• From a defensive standpoint, an applicant's previous knowledge and
disclosure of good art to the Patent Office during prosecution can take the
wind out of the sails of any of these types of future third-party challenges.
• From an offensive standpoint, keeping tabs on potentially relevant art and
competitive activities can stock a company's arsenal for future challenges of
their own against their competitors' patents or patent applications.

47. Professional Searchers & AIA

48. 7-20 Chisum on
Patents § 20.04
Injunctive Relief
Colonial Data Technologies Corp. v. Cybiotronics Ltd., 41 USPQ2d 1763, 1769
(D. Conn. 1996) ("We must look at the harm to [the accused infringer] that would
occur from granting a preliminary injunction. While we recognize that requiring
[the accused infringer] to remove [its product] from the market will be
harmful, the equities of such a hardship are somewhat balanced by the fact
that [the accused infringer] admits that it does not perform patent searches
prior to introducing new products into the United States. By so blindly
entering the [product] into the market, [it] assumed some risk that it might
have to withdraw its device."; "the harm caused to [the patentee] by such
alleged infringement is substantial.

49. Searches and “willfulness”

50. •No company is immune from patent litigation, and that the stakes are too high to risk not conducting
patent due diligence.
•Unfortunately, many companies and patent lawyers fail to conduct patent searches due to the fear
of “willful infringement.”
•In a patent litigation suit, a defendant can incur treble damages if the defendant willfully infringes a patent
i.e. knows about the patent in question and yet goes ahead to produce an infringing product in an
objectively reckless manner. (See the Supreme Court’s opinion in In re Seagate Tech., LLC.)
•Patent searches in and of themselves, however, are not objectively reckless and therefore do not
constitute willful infringement. After all, patent searches are a prudent use of company resources and
gives a product developer time to design a product in a way that does not constitute infringement.
•Research in Motion, on the other hand, was found to willfully infringe NTP’s patents - because the
company was on notice of NTP patents, conducted no investigation, and still moved forward to produce its
product. In fact, in an interview with former
•Chief Judge of the United States Court of Appeals, Paul Michel, Judge Michel adamantly supports patent
literature searches. As Judge Michel states: “I think any chief patent counsel who advises the scientists
and engineers in his company that they should never read patents is practically incompetent. There is
no reason in my judgment why company researchers should have to ignore the patent literature. Hardly
any damage awards are ever enhanced. In most cases, willfulness isn’t even established, and even when
it is, enhanced damages are not automatic” [emphasis added].
•Besides avoiding costly litigation, patent searches can help bolster the strength of a patent application
and increase its likelihood of passing patent examiner scrutiny. Patent landscape searches provide your
patent application with relevant prior art references. Knowledge is power.
•By showing how your patent differs from current technologies, you show the patent examiner (and courts
in future litigation) that you have done your due diligence and conscientiously made an effort to create
innovation. After all, innovation is what the patent system is all about.
http://www.cleantechpatentedge.com/2011/12/use-patent-due-diligence-to-lower-your-patent-litigation-risks/

51. •It is also important to note that if you do not conduct a prior art research
because you are afraid that there are probably some patents that you may
infringe, it’s what is called “willful blindness” in the US case law. You know the
risks, you continue producing and you don’t do anything to avoid the potential
infringement.
•Several IP experts have also analyzed the meaning of “willful blindness”.
Audrey A. Millemann (The Weintraub Firm’s IP Law Blog, Supreme Court
Adopts Willful Blindness Standard for Inducing Patent Infringement) explains: “A
willfully blind defendant is one who takes deliberate actions to avoid confirming a
high probability of wrongdoing and who can be said to have actually known the
critical facts…”.
James Yang (OC Patent Lawyer, Active Inducement, Willful Blindness
Sufficient) explains how to find willful blindness: “(1) the defendant must
subjectively believe that there is a high probability that a fact exists and (2) the
defendant must take deliberate actions to avoid learning of that fact.”
•If you choose not to conduct patent search you may avoid "willful infringement",
but you still have the risk of finding yourself in the middle of a patent battle and
have to take “willful blindness”
• http://www.crowdipr.com/blog/willful-patent-infringement-and-willful-blindness

52. Focus #2
Trademark Prosecution

53. Similar to Patent Practice
• No duty to conduct a trademark search
• 37 C.F.R. § 10.23(c)(2) (it is a violation of the PTO Code to knowingly give false or
misleading information or knowingly participate in a material way in the giving of
false or misleading information to the PTO); PTO Code, 37 C.F.R. § 10.23(d) (a
practitioner who acts with reckless indifference to whether a representation is
true or false may be charged with knowledge of its falsity.); PTO Code, 37 C.F.R. §
10.85 (in the representation of a client, a practitioner may not knowingly advance
a claim or defense that is unwarranted under existing law, knowingly make a false
statement of law or fact, or assist in conduct that is known to be illegal or
fraudulent.)
• The standards for candor to the PTO may be lower in trademark matters, a
violation of this duty is serious and may result in a cancellation of a registration or
may serve as an adversary’s absolute defense in an infringement action. In
practice, however, a violation of the duty of candor may be difficult to prove
because it requires state of mind evidence.
– Stephen W. Feingold, Jessica N. Cohen and Meredith A. Carlo, Ethical Considerations for Trademark
Lawyers (by Morgan, Lewis & Bockius LLP)

54. •What constitutes fraud on the PTO in connection with an applicant’s
declaration in a trademark application that it has the right to use the mark
in commerce. ?
•CAFC in In re Bose Corporation, held that a trademark is obtained fraudulently
only if ‘the registrant knowingly makes a false, material representation with the
intent to deceive the USPTO’.
•The 7th Circuit refused to conclude that a plaintiff intended to mislead the PTO
because the plaintiff had no duty to investigate references in a search report
prior to making a declaration to the PTO that it has rights to use a mark.
•Failure by a newcomer to conduct a trademark search may entitle the owner of
established trademark rights that are infringed by the newcomer to remedies
such as injunctive relief, whereas conducting a search may provide the
newcomer with something of a good faith shield that diminishes liability if sued
for infringement.

56. Hilfiger's choice not to perform a full search
under these circumstances reminds us of
two of the famous trio of monkeys who, by
covering their eyes and ears, neither saw
nor heard any evil. Such willful ignorances
would not provide a means by which
Hilfiger can evade its obligations under
trademark law

57. Further reading
• Linda K. McLeod and Stephanie H. Bald,
Ethical Issues in U.S. Trademark Prosecution
and TTAB Practice, 10 J. Marshall Rev. Intell.
Prop. L. 365 (2010-2011)
– http://www.finnegan.com/resources/articles/articlesdetail.aspx?news=7773074a-f847-4715-bbee-ceede1b2c428
• William Freivogel, Thomas B . Mason and
Robert Puglisi, Trademark Ethics: Conflicts of
Interest and Other Ethical Issues,
http://bit.ly/RDAA51

58. A Few Words for Librarians in the
House
Just say no to giving legal advice

59. What is Legal Advice?
• Requires legal knowledge, education, skill and
judgment
• Interpretation of the law
• Specific application of the law to a particular
circumstance
10/31/12 59

60. Legal Advice Examples
• Which form should I use?
• How do I fill this form out?
• Can I use these patent drawings in my brochures?
• Is this patent protected by copyright?
• Is my invention patentable?
• Do you think that I can get a trademark on this?
• Is my work covered by copyright?
• What are the specific rules I need to know on changing assignee? While
an application is pending can I change inventors?
10/31/12 60

61. What is the practice of
law?
The "practice of law" is the application of legal principles
and judgment with regard to the circumstances or
objectives of a person that require the knowledge and skill
of a person trained in the law.
ABA Center for Professional Responsibility
Task Force on the Model Definition of the Practice of Law
(Draft 9/18/02) http://www.abanet.org/cpr/home.html
10/31/12 61

62. What is unauthorized practice of
law (UPL)?
• Most librarians are not lawyers and it is illegal for persons to practice law
without a license. Among the states, there is no uniform definition of
"unauthorized practice of law." Lack of clarity in this area creates
uncertainty as to what duties librarians and paralegals may perform and
what duties must be performed by licensed attorneys. It creates the
potential for unknowingly and unintentionally committing an
unauthorized practice of law.
• For more information see the UPL statutes and pertinent case cites listed
by state at:
http://www.paralegals.org/Development/UPL-Chart.pdf
10/31/12 62

63. Be vigilant to avoid mistakes

64. Materials on impact of AIA on
Patent Searching

65. Effective Utilization of Patent
Searches in the Wake of the AIA
Patent Reform Law
April 30, 2012

66. Panel Members
• Moderator:
– Robb Evans, Business Process Management & Strategy, Global
Patent Solutions LLC
• Panelists:
– Kathryn Odland , Founder & Principal, Global Patent Solutions LLC
– Eric Wrzesinski , Patent Attorney & Research Manager, Global
Patent Solutions LLC

67. AIA Changes Affecting Patent Prosecution
Preissuance Submissions By Third Parties: Section 8 of the AIA
• “Any third party may submit for consideration and inclusion
in the record of a patent application, any patent, published
patent application, or other printed publication of potential
relevance to the examination of the application, if such
submission is made in writing …”
• Will take effect on Sept. 16, 2012
• Submissions can be made 6 months after the date on which
the patent application is first published

68. Implication of AIA Changes Affecting Patent Prosecution
Implications of AIA Changes:
One Perspective:
•Reserve fund of patent office fees collected in excess of its budget
that the USPTO may access
•Reduction of USPTO patent application Backlog
•Due to increased funding and resources available to the USPTO
•USPTO must petition Congress before it can spend money from the
reserve fund
•No elimination of Congressional “fee diversion”

69. Implication of AIA Changes Affecting Patent Prosecution
Future Implications Regarding Patent Prior Art Searching:
Our Viewpoint:
•As mentioned previously, we may see an increase in the total
number of vetted non-provisional patent application filings by
Technology Transfer operations and others – however, filing
with accurate claims becomes much more important for
protecting the invention
•Increased patentability searching for Pre-issuance
Submissions By Third Parties
•Further implications of this: Tech Transfer operations had better
be prepared for possible challenges submitted by larger players
who may be doing 3rd-party pre-issuance monitoring
•Conversely, well-prepared applications may actually receive “free
advertising” to those same parties doing pre-issuance monitoring

70. Patent Post-Grant PriorArt Search
Strategy

71. Patent Post-Grant Prior Art Search Strategy
Current Prior Art Searching Activities
•Patent Validity Searches
•Patent Invalidity Searches
•Freedom-to-Operate (“FTO”) Searches
•Patent Litigation-Related Searches

72. AIA Changes Affecting Patent Post-Grant Activities
New Post-Grant & Inter Partes Review Proceedings:
•Will take effect on September 16, 2012
•Opposition can file a petition for Post-Grant Review within 9
months after the issuance or broadening reissuance of a
patent if the opposition has not already brought a patent
validity civil action
•Replaces the current Inter Partes Reexamination proceeding
•Quick proceeding for challenging the validity of a patent in the
USPTO
•Inter Partes Review request can be filed when the 9-month
period for Post-Grant Review has expired or after the
termination of a Post-Grant Review.

73. AIA Changes Affecting Patent Post-Grant Activities
New Post-Grant & Inter Partes Review Proceedings:
• Will be conducted before the new Patent Trial and Appeal
Board, not an Examiner
• Post-Grant & Inter Partes Reexamination standard is
“substantial new question of patentability” for filings prior to
Sept. 16, 2011
• Post-Grant & Inter Partes Reexamination and Review
standard is “reasonable likelihood that the requester will
prevail” for filings on or after Sept. 16, 2011

74. AIA Changes Affecting Patent Post-Grant Activities
• Estoppel in the USPTO
• Estoppel in Civil Actions
• Appeal to the Court of Appeals for the Federal
Circuit

75. AIA Changes Affecting Patent Post-Grant Activities
• Joinder of Parties: Section 19 of the AIA bars a
plaintiff from suing multiple defendants in a single
lawsuit if the only jurisdiction for the joinder is that
all defendants are alleged to have infringed the
same patent
• Provision became effective as of September 16th, 2011
• Eliminates the patent troll strategy of naming unrelated
parties in a single infringement lawsuit
• Corporations will be less concerned about constantly being
sued by patent trolls

76. AIA Changes Affecting Patent Post-Grant Activities
Advice of Counsel: Section 17 of the AIA
• “The failure of an infringer to obtain the advice of counsel with
respect to any allegedly infringed patent, or the failure of the
infringer to present such advice to the court or jury, may not be
used to prove that the accused infringer willfully infringed the
patent or that the infringer intended to induce infringement of
the patent”
• Provision became effective as of September 16th, 2011
• Eliminates the automatic defense afforded by an FTO opinion

77. Impact of the New AIA Provisions on Patent Prior Art
Searching
Abbreviated Summary:
• Inventors may either publicly disclose their invention earlier
or file better-crafted applications
• Counter to early prognostications, sloppy provisionals
will likely actually decrease
• Due-diligence (e.g., well-crafted claims) will increase in
importance for applications to survive the new vetting
process
• New patent-grant monitoring processes are likely to emerge,
offering either headaches or opportunities; pro-activeness
will position winners and losers
• The value proposition on well-vetted patents will likely
increase

78. Questions & Comments

79. Commentary from Recent
Literature
Collected by Jon Cavicchi

80. Various provisions of the AIA further suggest that it will become increasingly important for many
applicants to keep tabs on potentially material prior art and on the activities of their competitors.
Many patent applicants prefer not to look for prior art, for example, to avoid searching costs and
the potential duty to disclose their findings to the Patent Office. Under the AIA, however, there
may be at least three compelling reasons to more diligently find and disclose relevant art to the
PTO.
One reason is the new supplemental examination procedure, under which a patent owner can
request that the PTO “consider, reconsider, or correct information believed to be relevant” to a
patent. It seems that almost every patent infringement proceeding includes allegations of
inequitable conduct, often based on a failure by the patent owner to disclose arguably material
references to the Patent Office in violation of the duty of disclosure. Senator Orrin Hatch (R-Utah)
stated: “[The] inequitable conduct defense is frequently pled, rarely proven, and always drives up
the cost of litigation tremendously.” Under the AIA, an applicant apparently can request
supplemental examination at any time of any potential prior art, not just patents or printed
publications. In exchange, patents will not be held unenforceable on the basis of information *53
considered, reconsidered, or corrected in supplemental examination. (The ALA. states that patents
also will not be held unenforceable on the ground that a request for supplemental examination was
not made.)
The other two reasons for disclosing prior art to the PTO relate to two types of AIA procedures
whereby third parties can administratively challenge a patent or patent application: third-party
submissions, and post-grant oppositions. From a defensive standpoint, an applicant's previous
knowledge and disclosure of good art to the Patent Office during prosecution can take the wind out
of the sails of any of these types of future third-party challenges. From an offensive standpoint,
keeping tabs on potentially relevant art and competitive activities can stock a company's arsenal for
future challenges of their own against their competitors' patents or patent applications.
41-JAN Colo. Law. 47 (2012)

81. 4. Reconsider Prior Art and Searching Strategies.
The AIA brings the U.S. more in line with other countries that allow pre-grant oppositions
by making it easier for third parties to submit to the USPTO information relevant to a
pending patent application (including prior art from anywhere in the world). The new rules
extend the timeframe for third parties to challenge a pending application and broaden the
types of information which may be submitted. For example, the AIA allows third parties to
weigh in on patent applications with serious thoughts, making it possible for the opposer
to file amicus-like briefs. Prior to the issuance of a pending patent application, companies
may submit to the USPTO prior art and any prior statements regarding the patent claims
made by the applicant before federal court or the USPTO.
In view of this, companies should reconsider the tradeoffs of performing their own prior
art searches pre-filing or during prosecution. By proactively disclosing relevant prior art to
the USPTO, companies may reduce the likelihood that the disclosed prior art will be used
successfully in third party submissions or future validity challenges. Results from searches
can also be used against competitors’ applications and in the new post-grant proceedings
available under the AIA (e.g., Inter Partes Review and Post-Grant Review). Prior art
searching now may have more strategic value than being merely a yardstick for
patentability or viewed as a Pandora’s box because of the duty of candor.
http://www.acc.com/legalresources/publications/topten/responseToAIA.cfm#four

82. • Inform clients of the greater scrutiny to patent applications and
granted patents regarding novelty, obviousness, and patentable
subject matter. Inform clients that a certain amount of diligence
may be required for prior art and patentability searches to
ascertain the probability for patent procurement.
Aspatore, THE CHANGING TIDE OF PATENTABILITY STANDARDS
AND FILING TIMELINES FOR BIOTECHNOLOGIES
December, 2011

83. The America Invents Act is not clear whether it is the United States public that matters for
this purpose. Under this change, inventors, patent owners, and users of inventions
presumably must attempt to learn about activities taking place anywhere in the world in
order to determine whether some invention is patentable in United States. If someone in
Beijing, Moscow, Tokyo, Hong Kong, New Delhi, Johannesburg, or any remote corner of
the world offered to sell some product to someone before a patent application is filed, a
United States patent may no longer issue. If the patent does issue, its validity will depend
upon whether a search throughout the world for activities of that kind turns something
up. The uncertainty about the patentability of some invention and the validity of some
patent will be enormous. The costs of people in the United States learning about when
any product or process was on sale or used anywhere in the world at any time and
learning about whether the someone anywhere in the world did something that made
some invention “otherwise available to the public” will be enormous. The uncertainty and
cost of operating under this change will be much greater than the uncertainty and costs
that result from patent interference proceedings. 1 Patent Law, Legal and Economic
Principles § 4:42 (2d ed.) (12/11)