Potential liability of lawyers performing/handling patent and

trademark searches: the questions are the answers

©Professor Jon R. Cavicchi, IP Librarian11/1/12

Mixed audience

Looking through the keyhole at problems lawyers can face dealing

with searches

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!

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)

Lawyers deal with searches in a number of settings

• Prosecution• Transactional work• Litigation• Handling IP business transactions• In house counsel• Outside counsel

Patents are legal, technical and business documents

• 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

“Patent data is the greatest source of competitive intelligence on earth”

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

Patent example: many types of searches

• Patentability• Prior art• Novelty• Pre-examination• Infringement• Validity• Right to use

• Freedom to to operate• Family/corresponding• Right to make• Clearance• Justification• Continuing• Patent Status

• adverse decision• certificate of

correction• disclaimer

• delayed fee• error correction

• expiration• extensions

• suits• reissue

• reexamination• withdrawal• assignment

28+ Post grating actions include...

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…

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

Tick tock…time is of the essence

• Take off my patent research professor hat and put on my librarian hat

First, the essentials…

Ethical and malpractice dimensions

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

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

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

What do legal sources have to say?

• Disciplinary Opinions• Ethics opinions• State & Federal Cases

– Malpractice– Breach of contract

• Jury Verdicts• News• Disclaimer: selective

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.

No guidance from ethics sources

From the Desk of Prof. Hricik

Results?

• Malpractice actions– Client who are injured by

• No search• Inadequate search

• Resulting in – Infringement– R&D spent on inventions that are not novel

A. Samuel Oddi, PATENT ATTORNEY MALPRACTICE: AN OXYMORON NO MORE, 2004 U. Ill. J.L. Tech. & Pol'y 1 (2004)

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.

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.

• 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)

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

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

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

Focus #1

Patent Prosecution

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

To qualify for the new accelerated examination program, applicant must: …8.

Conduct a pre-examination search

Patent professionals, academics & policy experts debate this

endlessly

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

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

Outsourcing - 1019 PLI/Pat 185Once 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 properservice 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 andthe 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 procedureswith 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 compromisingits client's confidential information

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)

• “[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.

Professional Searchers & AIA

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.

Searches and “willfulness”

•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/

•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

Focus #2

Trademark Prosecution

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)

•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.

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

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

A Few Words for Librarians in the House

Just say no to giving legal advice

04/11/23 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

04/11/23 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?

04/11/23 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

04/11/23 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

Be vigilant to avoid mistakes

Materials on impact of AIA on Patent Searching

Effective Utilization of PatentSearches in the Wake of the AIA

Patent Reform Law

April 30, 2012

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

AIA Changes Affecting Patent Prosecution

Preissuance Submissions By Third Parties: Section 8 of the AIA

• “Any third party may submit for consideration and inclusionin the record of a patent application, any patent, publishedpatent application, or other printed publication of potentialrelevance to the examination of the application, if suchsubmission is made in writing …”

• Will take effect on Sept. 16, 2012• Submissions can be made 6 months after the date on whichthe patent application is first published

Implication of AIA Changes Affecting Patent Prosecution

Implications of AIA Changes:

One Perspective:

•Reserve fund of patent office fees collected in excess of its budgetthat 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”

Future Implications Regarding Patent Prior Art Searching:

Our Viewpoint:•As mentioned previously, we may see an increase in the totalnumber of vetted non-provisional patent application filings byTechnology Transfer operations and others – however, filingwith accurate claims becomes much more important forprotecting the invention

•Increased patentability searching for Pre-issuanceSubmissions By Third Parties

•Further implications of this: Tech Transfer operations had betterbe prepared for possible challenges submitted by larger playerswho may be doing 3rd-party pre-issuance monitoring

•Conversely, well-prepared applications may actually receive “freeadvertising” to those same parties doing pre-issuance monitoring

Implication of AIA Changes Affecting Patent Prosecution

Patent Post-Grant PriorArt SearchStrategy

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

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 9months after the issuance or broadening reissuance of apatent if the opposition has not already brought a patentvalidity 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-monthperiod for Post-Grant Review has expired or after thetermination of a Post-Grant Review.

AIA Changes Affecting Patent Post-Grant Activities

New Post-Grant & Inter Partes Review Proceedings:

• Will be conducted before the new Patent Trial and AppealBoard, not an Examiner

• Post-Grant & Inter Partes Reexamination standard is“substantial new question of patentability” for filings prior toSept. 16, 2011

• Post-Grant & Inter Partes Reexamination and Reviewstandard is “reasonable likelihood that the requester willprevail” for filings on or after Sept. 16, 2011

AIA Changes Affecting Patent Post-Grant Activities

• Estoppel in the USPTO• Estoppel in Civil Actions

• Appeal to the Court of Appeals for the FederalCircuit

AIA Changes Affecting Patent Post-Grant Activities

• Joinder of Parties: Section 19 of the AIA bars aplaintiff from suing multiple defendants in a singlelawsuit if the only jurisdiction for the joinder is thatall defendants are alleged to have infringed thesame 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

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 withrespect to any allegedly infringed patent, or the failure of theinfringer to present such advice to the court or jury, may not beused to prove that the accused infringer willfully infringed thepatent or that the infringer intended to induce infringement ofthe patent”

• Provision became effective as of September 16th, 2011• Eliminates the automatic defense afforded by an FTO opinion

Impact of the New AIA Provisions on Patent Prior ArtSearching

Abbreviated Summary:• Inventors may either publicly disclose their invention earlieror file better-crafted applications

• Counter to early prognostications, sloppy provisionalswill likely actually decrease

• Due-diligence (e.g., well-crafted claims) will increase inimportance for applications to survive the new vettingprocess

• New patent-grant monitoring processes are likely to emerge,offering either headaches or opportunities; pro-activenesswill position winners and losers

• The value proposition on well-vetted patents will likelyincrease

Questions & Comments

Commentary from Recent Literature

Collected by Jon Cavicchi

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)

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

• 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 BIOTECHNOLOGIESDecember, 2011

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)