Conducting and Analyzing Prior Art Searches: Validity, Patentability, Infringement, FTO, State-of-the-Art Searches in the Age of AI

Description

Prior art searching is a critical step in the U.S. patenting process and evaluating whether issued U.S. patents will stand up under the rigors of the AIA's post-grant proceedings, U.S. district court litigation, or an International Trade Commission investigation. Prior art searching also plays a crucial role in assessing how freely a particular technology can be utilized in the U.S. and in performing due diligence related to patent licensing or patent acquisition opportunities.

For example, the search may well be necessary for the U.S. patent applicant to avoid potential risks of third-party U.S. patents and maximize patent protection concerning a specific product or invention. Knowing other relevant patented inventions or public disclosures allows for modifications to enhance the chances of achieving meaningful, patentable, and valid patent claims.

Given the Supreme Court's Helsinn holding affirming that even confidential commercial sales place an invention "on sale" under 35 USC 102, knowledge of the existence, content, and timing of a client's collaborations with third parties is critical to obtaining valid patent protection. On the other hand, competitive intelligence of a competitor's business dealings may provide valuable evidence of invalidity for blocking patent rights.

In light of the recent USPTO guidance on the 'Use of Artificial Intelligence-Based Tools in Practice Before the United States Patent and Trademark Office,' published on The Federal Register on April 11th, 2024, it is crucial for patent professionals to stay abreast of the evolving landscape of the use AI tools in patent searching. This guidance underscores the growing acceptance and adoption of AI technologies in patent practice, emphasizing the need for practitioners to leverage these tools effectively and ethically. However, practitioners must also balance the use of these tools with stringent considerations for data security, privacy, and confidentiality. As AI becomes increasingly integrated into the patent search process, it is essential to uphold the highest standards of data protection and ethical conduct to safeguard sensitive information and maintain client trust.

Counsel must formulate a strategic approach for the different types of searches, and search methodologies, recited above. Whether designing or commissioning a search, patent counsel needs to evaluate the prior art search's scope and timing given the ultimate objective. There should be a plan to tackle the issues of what, when, and where for effecting validity or freedom to operate searches, among others.

Further, counsel must analyze and assess the search results to pursue a successful patent application, face patent challenges, and help to maximize return when the patent owner is a target in due diligence.

Listen as our authoritative panel of patent attorneys examines when, how, where, and why to conduct various prior art searches, including validity, patentability, infringement, ownership, and FTO. The panel will discuss the differences and nuances in the different searches. The panel will also discuss the analysis and reporting of search results and offer best practices for conducting and analyzing prior art searches to increase your patent objectives' efficiency and effectiveness. These best practices include using new AI technologies, which will be discussed as well.