By Matt Benavides ‑ December 9, 2019
Patents exist in a delicate ecosystem, one in which balance can eventually and drastically shift. Today, an invention might be legally protected from use or replication by others. But, tomorrow, that same patent could be invalidated, breaking through a competitive window that, once opened, isn’t likely to close again.
The ability to open that window—i.e., to invalidate the patent—plays a critical role in allowing industries and manufacturers to continue innovating. It’s not, however, a simple or straight-forward thing (nor should it be). Invalidity searches and litigation require significant effort, meaningful expertise, and, above all, a level of ingenuity and creativity that is sometimes overlooked. Take, for instance, the incorporation of non-patent literature (NPL) in your invalidity searches.
NPL: Multiple Approaches, One Common Mistake
There are different approaches to NPL searching, depending on the desired outcome. Some might require only a superficial, basic electronic search. Others might prefer an extensive, scour the earth approach that leaves no stone unturned. No matter which approach is taken, however, many searchers adopt an overly narrow view of what constitutes NPL—limited, for instance, to sources such as journal articles or a basic web search. While, of course, there’s nothing wrong with either source, such a mindset leaves out other sources that could potentially change the game.
Videos, product manuals, product reviews, advertisements, even social media feeds—these are just a few of the different sources that often go overlooked in invalidity searches of NPL.
In Invalidity Searching, Occam’s Razor Often Holds True
Legal professionals are used to accepting complexity as inevitable and necessary. The law, after all, is a complex thing. But some things really are thatsimple—even in patent law.
In the 14thcentury, a Franciscan friar named William of Ockham brought forward a principle that still endures today, albeit somewhat misinterpreted. Also referred to as the Law of Briefness, Occam’s Razor is commonly interpreted to mean that the simplest answer is also likely to be the most correct. Translated from its original Latin, however, the saying amounts to this: “More things should not be used than are necessary.”
In other words, the more assumptions one must make in order to arrive at a specific answer, the less likely that answer is to be correct. The answer that requires the fewest assumptions is, conversely, most likely accurate. Now, perhaps you’re wondering how a principle based on simplicity and assumption could possibly pertain to patent law.
Prior Art Emerges in the Strangest and Simplest of Places
Too often, those looking to invalidate a patent limit their research to rather traditional information sources—research publications, academic journal articles, technical guidebooks, etc. But, while all of these sources are perfectly valid and useful, sometimes prior art appears in a much less official-seeming form.
It could be a social media post. It could be a sales brochure. It could even be a sketch on a cocktail napkin that was later scanned and digitally uploaded. Don’t assume that because a piece of information lacks complexity or seems overly casual that it doesn’t constitute prior art. Samsung once succeeded in using footage from the movie “2001: A Space Odyssey” to invalidate patent claims held by Apple. Likewise, be open to making your case using prior art that might seem unorthodox.
Just Because Google Can’t Find Something Doesn’t Mean There’s Nothing There.
For so many—especially those who professionally came of age after the dawn of the internet—the idea that an idea or concept might exist without being discoverable online seems unfathomable. If you can’t google it, after all, did ever really happen? The simplest (and most correct) answer is… absolutely. It just might take a good bit more leg work to root it out.
Don’t let search engines give you a false sense of security. It’s important to remember that the web did not start growing so rapidly until the mid to late 90s. While decades and decades of documents have since been uploaded, there still remain printed works and information that, for one reason or another, have never made it online. Finding them requires physical effort, perhaps even an airplane ride and a language translator. Be willing to put in significant legwork, and you might just see significant benefits.
Successful Outcomes Sometimes Require Unorthodox Approaches.
The thing to remember about non-patent literature is that there is no central hub or repository, no Dewey Decimal system by which all NPL is organized. Unearthing it often requires a mix of physical effort and creative thinking. It’s time-consuming, overwhelming, and sometimes confusing. Your greatest chance of successfully unearthing viable NPL hinges on searchers with the experience, education, and creativity to think outside IP law norms and look deeper than you’d ever think possible—unhindered by language barriers, hemispheres, or even their own mindset.