Post Grant Review: Doing what a patent examiner was unable to do…The Prior art Search we are proud of !
For a major US based medical equipment manufacturer a patent threat was neutralized before its genesis.
A US based medical equipment manufacturer was facing a threat from a patent application which had just been issued the ‘intention to grant’. This patent in-force meant some of our clients major products were facing infringement law-suits as most of these products were literally infringing the patent. We knew this patent could jeopardize our client’s business, which made this case was highly critical for us. Our client had to counter this threat, that too only in a short span of nine months. A killer prior art was immediately needed to attack the patent before its inception.
The patent to be invalidated was related to a valve breaking mechanism of a blood component extractor machine. The client wanted to challenge the validity of a specific independent claim and its dependent claims. The search was to be completed within a strict timeline.
We began by analyzing the subject patent application and developed a thorough understanding of the invention. Thereafter, we headed to the official website of the European Patent Office (as the subject patent application was a European patent application) to find the office action proceedings between the applicant and the patent examiner. These proceedings disclosed a clear and comprehensive picture of as to why the ‘intention to grant’ has been issued for the patent application. We read all the causes of rejections by the examiner and the corresponding arguments given by the applicant in support of his invention. The examiner had cited two prior arts disclosing the tube bending mechanism but the applicant argued that it does not disclose bending in both the directions as per his invention and finally was able to persuade the examiner. After developing the understanding about the whole case we knew that this project wasn’t going to be a piece of cake for us.
We kicked off the project with a brainstorming session to come up with different possible fields where the novelty aspect of the invention can be applied. Invalidation search in itself is more challenging in a way that the examiner had already performed his search on the invention with no yield of satisfactory result. At ExpertLancing we believe in doing our job in a cohesive and scientific manner and therefore, developing a pragmatic and comprehensive strategy for a project is an inherent part of our work culture. Likewise we developed a strategy for this project, which involved structured approach for searching on various databases for Patent as well as Non-Patent Literature. During our search we found that the patents disclosing about the blood component extractor were abundant, but were quite similar to the prior art cited by the examiner. There was no value add with the prior art at hand, we knew it was time to switch gears. Now, instead of doing a narrow search focused on the preamble of the subject patent – why not broaden the search to ANY mechanical bending machines. This lead us to discover two patent references disclosing about bending machines in an exact similar configuration as was disclosed in the novel aspect of the invention. Further through the course of the search we found a patent disclosing – the breaking of cannula of blood bag by back and forth motion, it was not specified if the process was manual or automated. However, combining the two prior art the subject patent could be rendered obvious.
These results gave the team some confidence and a fresh boost of energy, we still did not have a prior art to destroy the novelty aspect of the subject patent. We continued with our search but this time on NPL databases. We wanted to be sure there is no ground left uncovered. If there was a prior art – we were going to find!
Hurrah, we found a product – by some a very niche player, with no IP protection on the product. The product was already existing in the market way before the priority date of subject patent, the product was a blood component extractor disclosing about a tube bending mechanism for breaking the cannula of a blood bag. However, due to lack of a well written product description – our understanding of the product was based on only the images depicting the concept of the product. It was a hunch that we might not be able to find more text literature for the product, however, there could always be videos describing functionalities and construction of the product. YouTube was the next destination – and guess we were right – a very short and informal video did exist! But it was sufficient for us to showcase the novelty step. It required was everything we wished for.
The search enabled the client to attack validity of the target patent on anticipation and also obviousness grounds. The client was elated and surely relieved by our findings. The product literature, we supplied, formed a strong base for the client to not only invalidate the patent but also support the Freedom-to-Operate for the client’s product. The identified product prior art was present in the domain before the priority date of the target patent, hence, could have proved fatal for the entire patent family of the target patent!
It only takes ONE string to come up with bang-on result but an effective strategy is always prerequisite for this.