How Did They Patent THAT?!!
On more than one occasion we have heard a client express surprise or frustration that the Patent Office issued one of their competitors a patent which seems invalid because it claims something known in the “prior art” or has some overly broad claims relative to the prior art. This can be especially frustrating if the client is having trouble getting its own patent applications allowed.
Before getting too concerned, the first thing to do is check the claims to see how narrow they are. Narrow claims are allowed more easily because they more readily distinguish the prior art. However, they are also easier to “design around.” So, it could be that the competitor got the patent simply because it submitted very narrow claims to distinguish the prior art. In that case, the patent may not be much of a problem because you may be able to easily design around it without compromising the value of your product.
The Patent Office does, at least occasionally (some would argue “frequently”), issue overly broad patents, which raises the question, “how could this happen”? There are a number of potential reasons. One reason is that during examination, the Patent Office does not have access to all the types of information that dictate whether something is patentable. Typically, the patent examiners only have access to issued patents, published patent applications, and “non-patent literature” such as journal articles. Examiners normally cannot access commercial products that may have been on the market before the application for the patent of interest was filed even though the law says that such products are a form of prior art. If there are accessible advertisements which clearly demonstrate the features of the products, the examiners may cite those. However, under the law, a product placed on sale before a patent application was filed can render the application’s claims unpatentable regardless of any advertising or its content, yet the Patent Office does not have access to the details of commercial products.
A second reason that overly broad patents sometimes get issued concerns the doctrine of “inherent disclosure.” There are situations where a piece of prior art will not explicitly teach something that somebody put in a patent claim. So, an examiner may think that the feature is new and issue the patent even though if you actually did what is taught in the piece of prior art, you would necessarily obtain that claimed feature. In that case, the feature is said to be “inherently” disclosed (but not “expressly” disclosed).
For example, let’s say someone writes a patent claim for a certain kind of polymer with a particular tensile strength. There may be prior art that does not teach the tensile strength, but which includes directions for making a polymer such that if you followed the directions, you would get the claimed tensile strength. Patent examiners are not in a position to make and test products. So, an examiner may issue the patent because he or she is unaware that a prior art reference inherently discloses the claimed tensile strength. Examiners do sometimes try to mitigate this problem by presuming that if the prior art teaches the same method described in the subject patent application, it would have yielded any allegedly “hew” properties an applicant is trying to claim, However, they cannot always rely on such a presumption.
Another factor that contributes to the issuance of overly broad patents is that the examiners are typically not in a position to evaluate whether a proposed patent claim is “enabled” by the specification. The law requires that a specification teach persons of ordinary skill in the art how to make and use a claimed invention. There is a multi-factor test for figuring out if a patent application’s teachings are enabling, and the test requires complex analysis of the amount of experimentation that would be involved in trying to obtain the claimed invention based on what is taught in the specification. Examiners typically lack the resources to do that type of analysis.
Finally, and perhaps most importantly, patent examiners are not given an infinite amount of time to examine any single application. The number that has been cited in the past was 19.5 hours per application. It may have changed a little bit, but the point is that a patent examiner is given a very finite amount of time to examine a patent application, and things will get missed when you are operating under those constraints.
So, the patent examination process is actually something of a “coarse” filter for evaluating whether an invention is entitled to a patent. Because of this, the Patent Office has procedures that allow third parties to challenge the validity of an issued patent. A very popular one that has been around for about ten (10) years now is called “inter partes review,” which is an adversarial process between the patent owner and the patent challenger. Ex parte reexamination is an older process in which you submit prior art and explain why it raises a substantial new question of patentability. If the Patent Office agrees, it examines the patent like it was a newly filed application.
Ultimately, all the defenses that are available under the Patent Statute for invalidating a patent can be asserted in a patent infringement proceeding in court, typically by presenting expert witnesses and utilizing the discovery process to provide a much “deeper dive” into the validity of an asserted patent. Once a party is sued for patent infringement, it will often commission extensive prior art searches which may cover journal article databases, sales catalogs and advertising, university libraries, and other more obscure sources of prior art because the money at stake warrants the expense of much deeper searching. So, the examination process is really the “first round” of evaluating the patentability of an invention, and, unfortunately, it is sometimes the case that overly broad or invalid patents get issued.