It's a simple fact that the United States Patent and Trademark Office (the "USPTO") is inundated with patent applications. Given the sheer volume of applications, patent examiners can only spend a limited amount of time examining those applications. Further, given the fact that an applicant for a patent does not have to conduct a "prior art" search before filing, it is virtually impossible for an examiner to turn up all of the prior art that is relevant to a patent application.
Unbeknownst to many patent practitioners, however, the USPTO is getting ready to wrap up a yearlong pilot project directed at giving the examiners a little help in turning up prior art.
Last year the USPTO, in conjunction with the New York Law School, launched a program titled "Peer to Patent." This pilot project enables the public to comment on and submit prior art that may be relevant to pending patent applications. The project is somewhat limited in scope as only patent applications that relate to computer architecture, software, and information security are eligible for this process and applicants must agree to submit their patent applications to this process. However, preliminary numbers reported by the organization indicate that the project may be an effective means of reviewing patent applications.
According to the "Peer to Patent" Web site, over 2,000 people have signed up to participate as reviewers of patent applications and have submitted 192 pieces of prior art on 42 patent applications.
For more information about the process, see the USPTO's description of the program here.
When a company finds itself in court defending against a patent lawsuit, it will usually assert two major defenses. First, the company will say "I don't practice (or produce) what is claimed in this patent." Second, a defendant in a patent lawsuit will also attempt to "invalidate" the claims of the patent by showing that "prior art" described the claims in the patent prior to the application date of the patent. While this defense can take multiple forms (see, for example, 35 U.S.C. § 102 ), a defendant must often show that the prior art relied upon was in fact publicly known or publicly used. So now its time for a pop quiz--which one of three options would you consider not being "publicly accessible" for the purposes of United States patent law:
A: The use of a centrifuge in a secure laboratory at the National Institute for Health;
B: The posting of a paper on an unsecured FTP server; or
C: Indexing a dissertation in a paper file and placing it on a shelf...in Germany.
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To begin with, the fact that one is practicing the prior art doesn't prove they're not also doing something that infringes. For example, if I design and build a car that uses a gasoline engine and has LED headlights, I'm practicing the prior-art inventions of Daimler and Benz for a gas-powered automobile. If a patent holder claiming to have invented the combination of LED headlights sues me, the fact that I'm practicing the prior art makes no difference. The real question is, do the patent claims cover the use of LED headlights on an automobile--and does my car infringe those claims. An infringement analysis is determined by comparing the claims of the patent to my device, "not by comparing the accused device to the prior art."
What people really mean when they say they are practicing the prior art is that they are not doing anything new. In other words, if the patent claims cover what they are doing, then they must be invalid because they read on the prior art. So why does it matter whether the issue is infringement or validity?
The answer lies in the burden of proof in patent cases. To prove infringement, a patent owner must convince a jury that, in light of all the evidence, it is more likely than not that the defendant infringes. At trial, the jury will see the patent and the accused product, and will hear testimony from experts on both sides of the case to inform its decision. Jurors realize that most of the witnesses they hear from have some bias in the case, so they rely on their judgment to decide which side is telling the truth. On the other hand, when the validity of the patent is challenged, the jury is asked to question the judgment of the Patent Office--which the jury knows is unbiased. To prove invalidity, the defendant must prove by the much higher "clear and convincing evidence" standard that the patent is invalid. In other words, the jury must decide that the Patent Office clearly made a mistake.
During the past 12 months, the U.S. Patent office issued approximately 182,000 utility patents containing millions of patent claims. Many of them are very likely invalid. But, they are all presumed valid until proven otherwise. Given the choice between convincing a jury that the U.S. government got it wrong in any particular case and proving that the plaintiff has it wrong, most of us would rather take on the plaintiff, which is why lawyers and their clients continue to argue the "practicing the prior art" defense.
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