SAFE HARBOR

Why would the searcher look for lapsed or expired patent documents in an FTO search? Such dead patent documents may be valuable for learning the topic and as the basis for patent citation searching, whether or not they are reported to the client. But why report these expired patents in an FTO report? It seems that such dead art should not have an impact on an FTO analysis, except perhaps when the documents could be revived through administrative means, such as by paying overdue maintenance fees. This supports being cautious about eliminating patent documents that have only recently lapsed.

That being said, there are reasons why some attorneys and their technical and business colleagues would find such references of possible value. Frequently, there is unstated interest in getting patentability or state-of-the-art background information. In that case, the searcher should proceed with care and help the client understand that FTO searches are carried out differently from those other prior art searches. At a client’s request, I expand FTO searches to patent landscape search reports, which are essentially the same as FTO search reports, except that I disregard FTO date restrictions, and I do not review the claims of dead references as carefully.

A patent attorney may wish to see on-target, dead patent documents in order to make an argument that they provide a “safe harbor” for the client. Any prior art that discloses exactly the process or product that the client is considering commercializing may keep any subsequent patents on that matter from being granted. Wikipedia defines “safe harbor” in this manner: “no-longer-enforceable art that acts as a ‘safe harbor’ possibly permitting the product or process to be used based on patents [or non-patent literature] in the public domain.”

Technically, I consider that safe harbor references would be prior art that would invalidate each and every conceivable patent claim on which the composition, process, etc., could be alleged to infringe. This definition raises plenty of issues and seems to be a tall order. For example, is it certain that your client’s process will not change? The client should understand that the intended commercial venture must not vary significantly from that “safe harbor” prior art: Any improvements or differences could still be the subject of later patents.

How could you even conceive of every troublesome patent claim? The apparent high bar is mitigated by the analysis of the subject matter as described earlier. In the earlier examples, any no-longer-enforceable references that claim A and B and C and P without extra required components might be regarded by the attorney as sufficient to exclude any undiscovered, pending, or future claims from barring the planned commercialization as currently specified. It is up to the attorney and technologists to evaluate any connection of the offered “safe-harbor” references to FTO and their effect on the risk assessment.

CONDUCTING GOOD FTO SEARCHES

A good FTO search starts with a clear understanding of the search target, from which follows development of an effective search strategy, thoughtful searching, review of candidate references, and an informative recap of the search process and results. The searcher stands in for the technologist and patent attorney during the course of trying to find patent references that allow the patent attorney to write the FTO opinion. Therefore, the searcher must use available resources to understand the subject matter and all its components well.

The next step is to conceptualize claims of possible patents that might impact the client’s intended commercialization venture. The search strategy should be carried out with consideration of patent claims and supporting specifications, followed by careful review of the identified patents, consistent with the exclusionary nature of claims and full appreciation for what the patent attorney needs to support an FTO opinion. The searcher gains credibility and helps the patent attorney understand the whole process by writing an effective search report. Careful implementation of these steps should keep the searcher’s clients coming back for more.

Acknowledgments

This paper is based on the presentation “Freedom-to-Operate Study: HDPE Fuel Tanks” presented at the PIUG 2017 Northeast Conference (Iselin, N.J., Sept. 26, 2017). The author offers his sincere thanks to Sandra Unger for mentorship and for her review and comments on this paper and to Dominic DeMarco for his generosity sharing ideas in personal conversations, in discussions at conferences, and for encouraging me to elaborate on his teachings in this paper.

References

1. “Freedom-to-Operate Patent Searching: My Six Basic Rules,” Searcher. The Magazine for Database Professionals, May 2008, 16(5):34–39.

2. PIUG Freedom to Operate Fundamentals: Comprehensive Techniques for Researching Freedom to Operate: piug.org/fto_search_course.