Gathering strongest prior art is key in an AIA trial proceeding

Your issued patent may mean more to you than adding tangible and intangible value for your invention, or as a source of great pride. It may be crucial for your financial livelihood.

So if you find an entity is challenging your patent’s claims before the Patent Trial and Appeal Board (PTAB), you need as strong a defense as possible. These challenges occur in American Invents Act (AIA) trial proceedings when an entity challenges your patent’s claims as anticipated or obvious in light of prior art (i.e., earlier patents or other publicly available written references describing inventions or products).

One key to surviving an AIA trial—a process that begins before the patent even issues—involves gathering the strongest relevant prior art so you draft claims with an understanding of the point(s) of novelty of your invention: the improvement(s) in your invention distinguishing it over prior art.

You can conduct a prior art search using the USPTO’s Patent Public Search tool or an internet search engine. Additionally, you may visit the USPTO public search facility in Alexandria, Virginia, or access search terminals available at the USPTO regional offices in Detroit; Denver; Dallas; and San Jose, California. Similarly, you may leverage the USPTO search terminals at various Patent and Trademark Resource Centers across the country. Facility access or hours may be modified because of the pandemic, so we encourage you to determine ahead of time if the office you want to visit is open.

After conducting an independent search, consider working with a patent agent or attorney to help identify your invention’s point(s) of novelty and draft your claims.

Claims drafted to focus on your invention’s point(s) of novelty may be harder to challenge as anticipated or obvious in light of the prior art.

Your patent is only as strong as its broadest challenged claim at the institution stage, because it only takes one reasonably likely unpatentable claim for a trial to be instituted. As a result, it is important to draft strong claims.

You should also consider drafting claims of varying scope to focus on different aspects and combinations of aspects of your invention. During an AIA trial proceeding, the PTAB considers each claim individually and may determine that a challenger has proven that some challenged claims are patentable while others have not been proven unpatentable.

Your prior art search also helps draft a strong patent application that describes not only your invention but the state of the prior art. In the background section of your patent application, consider describing close prior art and then distinguishing your invention from the prior invention.

The PTAB will look to the patent’s description of the invention during an AIA trial proceeding to help understand and determine the meaning of your claims.

Researching and understanding prior art also allows you to respond to a patent examiner’s rejections during prosecution and build a record distinguishing your invention.

During an AIA trial proceeding, the PTAB may consider whether the examiner previously considered the same or substantially the same prior art or arguments.

For more specifics about conducting a prior art search, see the USPTO patent searching webpage: