More than 30 years ago when I started my career as a patent examiner in the U.S. Patent and Trademark Office (USPTO), there was a common phrase that went something like this: “Patents are not valid until they are litigated.” Back then, a seasoned patent examiner would have seven hours to study a patent application before spending hours in examiner search rooms looking through paper copies of issued U.S. patents (and a scant number of foreign patents) and miscellaneous “prior art collections,” some of which were privately maintained and not always shared with examiners.

Prior art searching involved reading the abstracts on the faces of issued patents, looking at the drawings and cursorily checking portions of the text as needed. Copies of issued patents that seemed relevant and needed more thorough review were removed from the search rooms and taken back to the examiner’s office to study while writing up Office Actions. After spending three to four hours studying an application and “pulling” prior art references, an examiner would have the limited remaining time to thoroughly analyze each of the relevant prior art references and apply them to the claims of an application while also examining formal matters and writing up an Office Action. Upon receiving an amendment in response to an Office Action, the examiner would have another seven hours to search the prior art, study a patent applicant’s amendments and arguments, and issue a second Office Action or allow an application.

In my career outside the USPTO, several other patent attorneys and I were sent to the public search room at the Patent Office to search for prior art to invalidate a particular patent. We easily spent 40-60 hours uncovering and analyzing prior art that was never considered by the examiner issuing the patent we were intent to invalidate. Based on the limited time an examiner had to conduct an examination of a patent application, and the fact that, at any given time, prior art copies pulled by examiners were not placed back in the search rooms for days (adversely affecting the integrity of the search facilities), it seemed reasonable to accept that constraints on the examination process could impact the validity of issued patents.

Modern-Day Drawbacks

In today’s information age, examiner search rooms and paper copies of patents have been replaced with computers. One may think that would make the work easier and more efficient, but it is questionable if modernization of the examination process itself has improved the quality of issued patents. Today’s examiners rely on computer searching to identify and assess prior art references, and examine application papers on computer screens for 8-10 hours/day. Text searching for prior art is inherently subject to using proper and alternative search terms. Assessing prior art and examining patent applications on computer screens for extended periods of time is fatiguing. Moreover, intense reading on a computer monitor can cause work mistakes and lost productivity.

All issued U.S. patent are accorded a “presumption of validity” in courts. However, the “presumption of validity” of a patent has little respect outside the courts. It is a common, highly recommended practice for practitioners to independently verify the validity of patents before asserting patent rights or before a buyer acquires patent rights by purchase or licensing.

New Procedures

In order to create an alternative to litigation and improve the quality of patents, the USPTO instituted a collection of post issuance review procedures that allow patentees and third parties to challenge the validity of patents within the jurisdiction of USPTO. Inter Partes Review (IPR) is a new trial proceeding conducted at the Patent Trial and Appeal Board (PTAB) of the USPTO to review the patentability of one or more claims in an issued patent based on prior art consisting of patents or printed publications. Post Grant Review (PGR) is a trial proceeding conducted at the PTAB of the USPTO to review the patentability of one or more claims in an issued patent that is not limited to challenges based on prior art. Business Method Patent Review (BMPR) is similar to PGR, but requires that the petitioner has been charged with infringement of the patent at issue. In addition to providing cost-efficient alternatives to litigation, IPR, PGR and BMPR all allow the presumption of validity of patents to be challenged, tested, and verified by the USPTO and thus improve patent quality at the USPTO level.