Should I hire a search service to find prior art used to invalidate claims in an Inter Partes Review (IPR)?
About the Author: Mr. Sheerin is a California licensed patent attorney having represented clients accused of patent infringement in Federal District Court as well as through Inter Partes Review (IPR) at the US Patent Office. A few of Mr. Sheerin's recent results may be viewed here:
Searching for prior art (patents and printed publications) to support an IPR petition is the most important part of the entire IPR process. The prior art search should be around 90% of the work involved regardless as to which law firm you hire. The IPR petition is literally as strong as the prior art you assert with the legal arguments of invalidity being almost superfluous. The PTAB judges deciding the IPR petition will consist of extremely experienced patent examiners, typically more experienced than the original patent examiner who examined the patent at issue. Although the legal argument supporting the petition can help, the PTAB judges will need little persuasion if the prior art is on point, particularly when the prior art clearly anticipates at least one claim.
One of the most important skills needed to be an excellent patent attorney is the ability to understand the invention and the claims so as to enable a competent prior art search. Search services typically use engineers to perform prior art searches which, in my opinion, is almost completely worthless. Whether it's a lack of technical competence or a lack of legal training in patent law, search services in my experience are extremely inept at finding prior art. One of my large corporate clients used a search service to search prior art for each invention disclosure they sought to patent (I drafted over 600 such patent applications for this client). Each time they assigned me a new invention disclosure, they included the search report from the search service. Each time I would scan the search report to see if they found any relevant prior art, and almost every time the prior art cited was not even close. I would then perform my own prior art search and invariably find all of the relevant prior art which was almost never cited in the search report. A few times my corporate client abandoned the patent application in view of the strength of the prior art I discovered. But most of the time we agreed on certain aspects that were still patentable over the prior art (and I drafted the claims accordingly). The point is that in almost every single instance (and there were hundreds), the search report was a complete waste of time and money. If an engineer understood how to search prior art, they would already be a patent attorney as this is one of the most important skills honed by the best patent attorneys. Understanding an invention and having the ability to find the relevant prior art is 90% of what good patent attorneys do. Whether a patent attorney is prosecuting a patent application with a patent examiner, or filing an IPR petition, being able to find and understand the relevant prior art is the key to success.