Patentability & Searching

image Invest in the Right Places

As of August 2012, the U.S. Patent and Trademark Office is reporting an average of 22.3 months from a patent application filing to receipt of the first Office Action. The first Office Action is typically the first indication from the PTO that an invention is or is not likely to be patentable

Because business moves so much faster than the PTO, it may be advisable to perform a patentability analysis before investing in a patent application. A patentability analysis involves searching the relevant prior art for pre-existing disclosures that could materially impact the scope of patent coverage available. Information about existing prior art can be used to help design a patent prosecution strategy that focuses on areas more likely to result in patentable subject matter and avoids areas that are unlikely to be patentable.

Clear and Convincing Results

U.S. patent law provides that issued patents are "presumed valid." (35 U.S.C. § 282.) The U.S. Court of Appeals for the Federal Circuit has historically required proof of invalidity by a "clear and convincing" standard. The lower "preponderance of the evidence" standard, which applies to allegations of infringement, does not apply to invalidity defenses.

In June 2011, the U.S. Supreme Court unanimously affirmed the application of the “clear and convincing” standard to demonstrations of invalidity. In the case of Microsoft Corp. v. i4i Limited Partnership, the Supreme Court stated: "We consider whether § 282 requires an invalidity defense to be proved by clear and convincing evidence. We hold that it does." Microsoft, unable to prove invalidity to that higher standard, was subject to a $250 million judgment for infringing i4i's patents.

To meet the heightened standard for proving invalidity, litigants must identify and assert the strongest, most relevant prior art. Litigants need a searcher who understands the technology. We have the technical and legal knowledge to find the best prior art. We have prosecuted reexaminations at the USPTO and asserted invalidity defenses in numerous hostile matters. We know what it takes to invalidate a patent.