Conducting and Analyzing Prior Art Searches: Validity, Patentability, Infringement, FTO, State-of-the-Art Searches in the Age of AI
Course Details
- smart_display Format
On-Demand
- signal_cellular_alt Difficulty Level
Intermediate
- work Practice Area
Patent
- event Date
Thursday, June 13, 2024
- schedule Time
1:00 p.m. ET./10:00 a.m. PT
- timer Program Length
90 minutes
-
This 90-minute webinar is eligible in most states for 1.5 CLE credits.
This CLE course will guide patent counsel on structuring and conducting prior art searches using traditional and next-generation tools. The panel will also discuss the reporting of search results and offer best practices for analyzing prior art searches to maximize patent protection.
Mr. Irving has 47 years of experience in the field of IP law. His practice includes due diligence, patent prosecution, reissue and reexamination, patent interferences, and counseling, including prelitigation, Orange Book listings of patents covering FDA-approved drugs, and infringement and validity analysis in the chemical fields, as well as litigation. He has served as lead counsel in many patent interferences.
Ms. Premraj’s diverse patent practice includes client counseling, prosecution, litigation, and post-grant proceedings before the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO). While her technical background is rooted in medical devices, she works with a broad field of technologies, including augmented and virtual reality (AR/VR), electrical and computer technology, financial and business systems, and manufacturing. Prior to joining Finnegan, Ms. Premraj was a patent examiner with the USPTO for three years, specializing in medical diagnostics. She gained considerable experience addressing subject matter eligibility issues as relevant to methods and systems for medical diagnosis.
Ms. Curcio is an IP attorney and CEO of NLPatent - an AI software company with a leading patent search platform used by some of the largest law firms and companies in the world. She holds a number of leadership positions at national and international IP organizations including serving as Vice Chair of the American Intellectual Property Law Association’s Emerging Technologies Committee and is a Board Member of the Global IP Alliance. Ms. Curcio is a thought leader in the AI/IP space and is called upon to contribute to comment requests from national patent offices around the world, such as the USPTO, the WIPO and the CNIPA. Her work and contributions to the AI/IP community has made her a sought-after expert on these topics and a frequent speaker on applications for AI in patent practice. Ms. Curcio is consistently ranked as among the top 300 IP strategists in the world; she’s a “Global Leader” and “Powerful Woman” in IP, according to Intellectual Asset Management Magazine and the World IP Forum, respectively.Â
Ms. Yates is currently a Senior Principal Information Scientist and Science Fellow for Bayer CropScience, where she has been for 29 years. Her role includes patent and literature searching; IP information management, including virtual patent marking; and research recordkeeping policies and training. She is a registered US patent agent and a Qualified Patent Information Professional (QPIP.org).  She was on the board of PIUG (Patent Information Users Group) for over 10 years including 4 years as chair.  She was a recipient of the Stu Kaback Business Impact Award from PIUG in 2020. She is currently the chair of the Patent Search Committee of IPO (Intellectual Property Owners Association). Ms. Yates has a bachelor’s degree in Biology from Colorado College and one masters in Biochemistry and one in Library Science from the University of Kentucky.
Prior art searching is a critical step in the U.S. patenting process and evaluating whether issued U.S. patents will stand up under the rigors of the AIA's post-grant proceedings, U.S. district court litigation, or an International Trade Commission investigation. Prior art searching also plays a crucial role in assessing how freely a particular technology can be utilized in the U.S. and in performing due diligence related to patent licensing or patent acquisition opportunities.
For example, the search may well be necessary for the U.S. patent applicant to avoid potential risks of third-party U.S. patents and maximize patent protection concerning a specific product or invention. Knowing other relevant patented inventions or public disclosures allows for modifications to enhance the chances of achieving meaningful, patentable, and valid patent claims.
Given the Supreme Court's Helsinn holding affirming that even confidential commercial sales place an invention "on sale" under 35 USC 102, knowledge of the existence, content, and timing of a client's collaborations with third parties is critical to obtaining valid patent protection. On the other hand, competitive intelligence of a competitor's business dealings may provide valuable evidence of invalidity for blocking patent rights.
In light of the recent USPTO guidance on the 'Use of Artificial Intelligence-Based Tools in Practice Before the United States Patent and Trademark Office,' published on The Federal Register on April 11th, 2024, it is crucial for patent professionals to stay abreast of the evolving landscape of the use AI tools in patent searching. This guidance underscores the growing acceptance and adoption of AI technologies in patent practice, emphasizing the need for practitioners to leverage these tools effectively and ethically. However, practitioners must also balance the use of these tools with stringent considerations for data security, privacy, and confidentiality. As AI becomes increasingly integrated into the patent search process, it is essential to uphold the highest standards of data protection and ethical conduct to safeguard sensitive information and maintain client trust.
Counsel must formulate a strategic approach for the different types of searches, and search methodologies, recited above. Whether designing or commissioning a search, patent counsel needs to evaluate the prior art search's scope and timing given the ultimate objective. There should be a plan to tackle the issues of what, when, and where for effecting validity or freedom to operate searches, among others.
Further, counsel must analyze and assess the search results to pursue a successful patent application, face patent challenges, and help to maximize return when the patent owner is a target in due diligence.
Listen as our authoritative panel of patent attorneys examines when, how, where, and why to conduct various prior art searches, including validity, patentability, infringement, ownership, and FTO. The panel will discuss the differences and nuances in the different searches. The panel will also discuss the analysis and reporting of search results and offer best practices for conducting and analyzing prior art searches to increase your patent objectives' efficiency and effectiveness. These best practices include using new AI technologies, which will be discussed as well.
- Prior art searches
- Patentability
- Validity
- FTO (infringement)/clearance/due diligence
- State-of-the-art
- Assignment/ownership
- Structuring and conducting the search
- Purpose
- Timing
- Scope
- Searching non-English language patents/applications
- Using AI tools that leverage natural language processing and machine learning technologies
- Analyzing and presenting search results
The panel will review these and other key issues:
- What are the critical considerations when determining what, when, how, and where to search?
- What are the critical components of an effective search strategy, analytical process, and follow-up steps to enhance the possibilities of ensuring a successful patent application?
- How can artificial intelligence be leveraged effectively and ethically to create a successful search strategy?
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