Invalidity Searching – An Exercise in Valid Creativity
by: Chris Mulkey, COO/Head of Research
The current paradigm of invalidity searching often falls short of success; however, some simple tweaks to the process can vastly enhance the outcome. Effective invalidity searching takes some outside-the-box, creative thinking, particularly when the target claims have survived multiple, independent attacks on validity by patent office examiners and third parties alike.
Depending on the goal, certain types of patent research can be quite formulaic. As an example, whenever clearance/infringement is at issue, there are typically subsets of the particular art that simply must be reviewed: appropriate patent classifications, forward/backward citations, major assignees in that space, etc.
In this sense, there is a certain formula that must, in-part, be followed to accomplish the goals of minimum due diligence. Generally, once this formula has been followed, thorough research needs only to tie up loose ends, investigate any outlier findings, and call it a wrap. It seems like a brute-force exercise, but claim interpretation is the real skill involved, rather than location of art.
Invalidity at its Core
Invalidity searching, on the other hand, diverges from most other types of searching with regard to defining a workflow for finding the best results. Once a priority date is set as a threshold, the publication world is your oyster. So what is it that distinguishes mediocre invalidity research from elite invalidity research (besides Techson IP)?
Simple. Those at the elite level are those who understand not that a strategy can evolve, but that it must. And that ability to evolve one’s strategy in real time is what takes a bit (or sometimes a lot) of creativity.
The primary reason for this requisite creativity is that as one begins invalidity research, someone before you has already vetted the art. This vastly decreases the chance that some hyper-obvious, prior art publication is just going to fall into your lap (this does happen occasionally, and feel free to crack open the bubbly and relax the rest of the day if/when it does, but don’t bank on it).
So, as you will almost invariably have to start digging into the core and peripheral arts to find your pre-priority evidence, why doesn’t invalidity searching lend itself to a standardized workflow like some other types of research? I believe the answer is because those golden nuggets of teaching weren’t meant to be found in some sense. That is not to say they were deliberately hidden, but often we find valuable nuggets tucked in a corner of a publication whose thrust had little to do with the target of our search.
Very often, small, seemingly insignificant teachings were drafted as after-thoughts, as very minimal additions to what the publication is really teaching, or as part of a laundry list of possible embodiments contemplated in the application-drafting sense, but not in the reduced-to-practice sense.
This shouldn’t be too surprising after all, as if the crucial limitations you seek evidence for were so obviously related to the core art, they should have been more apparent to the Examiner, or to an interested third party. The formulaic type of searching doesn’t find these subtle teachings, or at least may overlook crucial value when masked by an otherwise uninteresting publication.
How, then, does one find these golden nuggets?
- Short answer: I’m not quite sure.
- Next shortest answer: I’m still not quite sure.
What I CAN tell you, though, is that you need to trust your instincts when you see something interesting, and don’t let something interesting fall to the bottom of your priority list!!! It needs to be investigated NOW.
Having done this for many years, I promise I speak from experience about this: when you find a smoldering lead, if you merely make a note to investigate it later, you may lose forever that sense of urgency or fascination that led you to define it as a lead in the first place. Even if you retrace your steps at a later time, you may never fully recover exactly what it was about the reference that initially piqued your interest.
This is precisely where creativity distinguishes the elite researcher from the rest of the well-educated, but paradigm-entrenched researchers. The ability to meaningfully stray from what otherwise might be a formulaic attack on the prior art is sometimes the single best way to enhance your 102-locating statistics from the 5-10% level to the 80%+ level.
Now for the great letdown…I cannot define what creative research is precisely (Sorry, folks, but you probably saw that coming). Instead, I will advise that you must learn to trust your instincts for an enhanced outcome. When you master that, you’ll know when to stray outside the box and into the rabbit hole – that IS the creative part of the whole exercise.
The box will always be waiting for you if your adventures go awry.