(of a bad or harmful act) intentional; deliberate.
“willful acts of damage”
There was a time courts treated willful infringement simply as an act of intentionally copying a patented invention. The onus was on the plaintiff to present convincing and clear evidence of an obvious infringement. Things changed; the alleged infringer now had to build a record to show that it did not act in bad faith. In 2016, the US Supreme Court issued an opinion wherein they stated that the Patent Act provides for enhancement of damages up to three times in case infringement is proved.
You can no longer ignore the infringement notice; it would be considered as a case of willful infringement!
Whether Willful Infringement or Not – Notice is here. Now What?
The logical first step would be to check the following:
Is the notice from a genuine patent holder or a patent troll?
How strong is the subject patent?
Does it really infringe?
What’s the existing prior art?
Has it genuinely been overlooked by the innovation team?
Was the innovation very easily available?
Did it not occur to the development team that something so easily available might be patented?
Once you figure out if there is any merit in the notice, it’s time to decide which route to take – settle this dispute or fight the good fight in the court?
A couple of things to remember
A settlement is almost always a good idea. Only if you see merit in the infringement notice you have received.
Taking the court route is extremely resource heavy. It will drain your enterprise of time, energy and of course, money. It might be worth depending on what’s at stake.
If you, after weighing all considerations, believe that an out of court settlement works better for you, there won’t be any need to respond to the notice. Make sure that your settlement agreement is air-tight when it comes to court claims against you though.
If you do choose to go down the legal route through courts, you must reply to the notice.
Check Patent Strength
Wonder if there’s a quick and effective way to help you decide the route? A tool that helps you gauge the strength of the patent without even employing your IP team? The IP resources should be saved to look into the matter only if the subject patent appears real strong.
Imagine a search tool that can access any technical information out there – patent as well as non-patent literature. A search tool that has the most advanced algorithm to find you only the most relevant results. To top it all – conducting search on such a platform is a piece of cake. Sounds unbelievable?
We hear you, however it’s possible to create such a tool with the advances in AI capability to interpret the patent language. In fact we’ve taken the first step towards building such a tool. We call it PQAI – Patent Quality Through Artificial Intelligence.
PQAI is a collaborative initiative that aims to leverage AI to create a tool we just described. We envision – “A universal repository of humanity’s entire technical knowledge efficiently accessible to everyone and anyone.”.
At the moment, PQAI is far from perfect but it’s definitely promising. We say that with confidence because of the results that various validation test cases we have run have given us. A few months ago, we identified some IPR cases and ran the subject patents through PQAI. In some of these cases we observed that PQAI was able to find the prior art cited by the sued party to invalidate the subject patent. We’re sharing one of those cases with you right here:
Facebook VS Villmer LLC Inc
Facebook had received an infringement notice over Oculus Go from Villmer. We used PQAI to run a prior art search to see if it could have helped locate prior art. It gave us results that matched the prior art that was submitted to have the patent invalidated.
The patent that was the subject matter of the litigation bore the number US9618747. The patent broadly pertains to head-mounted displays. Villmer’s infringement allegations focused on Facebook’s head-mounted virtual reality (VR) devices, the Oculus Go and the Oculus Quest. The ’747 Patent was valid, enforceable, and was duly issued in full compliance with
We picked up claim 1 from patent number US9618747 and pasted it in the PQAI query box. Here’s a screenshot of one of the prior art that Facebook listed during IPR to have ‘747 invalidated.
Here’s the prior art PQAI spotted against our search for Claim 1 from ‘747. The spotted patent bears no. US2012005053A1, one of prior arts listed by Facebook:
PQAI is a search tool that is a work in progress. We would like to see it get to a stage where prior art like this ranks higher and results are even more efficient. And we are constantly working toward perfecting the system.
Get Involved – Join the PQAI Initiative
PQAI is a collaborative initiative to build an AI-powered prior art search tool accessible to all involved. We would love all stakeholders to come forward and join the initiative. You as a corporate can contribute too! The question is why would you….
Well with PQAI, we aim to create a more stable and transparent patent ecosystem for corporations. We believe it will make R&D investments more predictable, increase confidence in patents, and make risks and opportunities more visible. We could use all the resources we can get in making this initiative a success. You could be part of this revolution by funding the development of the tool. In return, you will give to yourself, and the world at large a system to file better patents.
Disclaimer – “The statements and views expressed in this post are intended for general informational purposes only, and do not constitute legal advice or a legal opinion.”
Inventors get so many queries like: Can I get a patent on my invention? What is prior art? Can a YouTube video count as prior art? We have prepared this guide to prior art to help inventors succeed in their patent seeking journey.
Can I Get A Patent On My Invention?
You came up with a breakthrough idea, say a cot that can put babies to sleep using a particular vibration pattern and soothing music. A lot of parents can’t catch enough sleep if their babies don’t sleep well at night. You have solved a problem that a lot of parents face. A lot of parents might be interested in buying such a cot. You see a possibility of a great revenue stream. And because you feel your invention is novel, you see that it has the potential to be patented.
However, there is a possibility that someone else has already come up with a similar invention and received a patent on it. Now that patent is a “prior-art” that can stop you from receiving a patent on your invention.
Hope this example gave you the basic idea of prior art. In this post, we have brought to you a detailed, visual, and very clear explanation of everything you need to know about it. We have also shared how you can conduct a “Zero Budget Prior Art Search”.
What is Prior Art?
Prior art is any evidence that an invention is already in existence or publicly available prior to the filing date of the patent application. The invention does not need to be commercially available or exist physically to be prior art. It suffices that the invention has been previously described or shown to be something that contains the use of technology that is like your invention.
So, if you file a patent without the searching for prior art and the patent examiner finds that your invention is not novel (new), you receive ‘§102 type rejection’: “Non novel or not new”.
“21.28% of patent applications got rejected over a period of ~4 years from 2017 to September 2020 because they did not meet the ‘novelty’ criterion.”
There is one more common reason for rejection: ‘§103 type rejection’: “Obvious improvement over the prior-art”.
“46.95% of patent applications got rejected over a period of ~4 years from 2017 to September 2020 because they did not meet the ‘non-obviousness’ criterion.”
Note: Stats are based on the rejections (Final +Non Final) given by the Patent Examiners, for the US applications from 2017 to September 2020
The §102 and §103 constitute 68.23% of the total rejections. This indicates that either an examiner found a prior art questioning the novelty of an invention disclosed or an examiner combined two or more references to prove that an invention disclosed is obvious.
It is critical that inventors invest in a thorough search of past and present products and patents before they conclude on the novelty and non – obviousness of their invention.
Does this count As Prior Art?
A very similar invention is available in a video on Youtube, does this mean we cannot obtain a patent for that invention?
It certainly can depending on the similarity with your invention.
Inventors often have queries about what counts as a prior art and if a certain public information can be the reason for rejection of their patent application. Such disclosures can definitely act as a prior art depending upon the level of similarity with your invention.
Any invention that has been publicly disclosed or made publicly available in any language or in any part of the world may count as prior art.
It can be a:
product that was available for sale,
an invention used commercially,
printed or electronic forms of articles,
publications, texts, journals,
presentation at a public event,
or any form of public use of the invention.
An existing product or patent is the most obvious form of prior art. Inventors often assume that because they cannot find an existing commercial product containing their invention, their invention must be novel.
This assumption is far from reality. Inventions often never become products, yet there may be public records showing their existence. That record counts as prior art.
Does This Not Count As A Prior Art?
Generally, information that is disclosed or becomes available to the public after the ‘effective’ filing date (or priority date) of your patent application would not qualify as prior art.
Also, patent applications that are filed after yours generally would not qualify as prior art.
#sidenote: A trade secret does not count as a prior art.
What Is Prior Art Under AIA: §102, §103?
The America Invents Act (AIA) is a complex bill that includes a significant change to U.S. patent law The AIA relates fundamentally to whether or not an invention can be classified as prior art with arguably the most impactful change being the shift from a “first to invent” system to a “first inventor to file” system on March 16, 2013.
Section 102: First to Invent Vs. First Inventor to File
Pre-AIA Sections 102(a) and 102(e): Patents were granted using the “first to invent” system. The section provides that an inventor is not entitled to a patent if the claimed invention was already patented, described in a patent or is in public use by another inventor before the claimed invention.
For example, under old U.S. patent law, an inventor could rely on the earliest documented date of the invention and obtain priority to another inventor with an earlier-filed application.
AIA Section 102(a): Prevents a patent if the claimed invention was described in a patent or patent application filed before the effective filing date of the invention.
For example, under the AIA, the U.S. Patent and Trademark Office (USPTO) will award a patent to an inventor who has the earliest effective filing date. The earliest effective filing date is the original date that the application was filed.
Section 103: Obviousness
Pre-AIA Section 103: Prevents patenting of an invention if it would have been obvious at the time the claimed invention was made.
AIA Section 103: A patent may not be obtained if the invention would have been obvious before the effective filing date of the claimed invention.
Example: Prior-art reference (1) teaches encryption. Prior-art reference (2) teaches how to send an email. Then sending an encrypted email would not be novel. It would be ‘obvious’ because there is a motivation to send emails in a form that would allow them to be read only by the intended recipient.
How To Conduct A Prior Art Search?
The easiest way to do the search should be like:
telling your innovative idea to a friend,
and asking the friend if he has heard or seen something like it.
assuming that the friend knows it all, if he says he has not heard of it;
your invention is new and there is a possibility to get a patent over it.
Because you just want to determine if your invention is new or novel enough to get a patent on it.
However that’s the ideal scenario and far from reality.
Free Prior Art Search Resources
For an inventor who is (often) not skilled to conduct a prior art search it can be quite challenging to do so. Although there are many free resources for patent or prior art searching available, most of them do not understand natural language queries. To name a few:
Besides that many times companies use deceptive language in patents to hide their IP activity from competitors. That makes it further difficult to find the relevant prior art.
Look at the snapshot below, we have picked this from reddit (r/patents). Clearly the inventor tried to look for prior art in USPTO and Google patents but faced difficulty with language and search navigation.
“Bendable”, “Foldable”, “Flexible” are some synonyms that can be used to refer to the same aspect of an invention. Different patent drafters would have used different terms. However you don’t want to miss out on any relevant result and hence it would be needed to take care of synonyms while searching.
The Complex Search Queries
The patents databases are a huge set of information. Thousands of results are received for a single query. complex search queries are the only way to narrow down the results. These queries are nothing but keywords arranged with a specific logic (Boolean (AND/OR) search string) to get relevant prior art results.
The Patent Language
The patents are usually drafted in a very specific language, difficult for a person with the non-ip background to comprehend. For example: a computer might be written as “an information exchange system” to cover any other similar devices like phone, tablet etc.
How Much Does It Cost To Get A Prior Art Search Done?
Professional Search Fees
According to upcounsel if you hire a professional to conduct an in-depth prior art search, it shall cost you anything between $1000 to $3000 based on the complexity of the invention.
$1,000 to $1,250 for simple inventions
$1,250 to $1,500 for slightly complex inventions
$1,500 to $2,000 for moderately or relatively complex inventions
$2,000 to $3,000 for highly complex inventions or software
Government Search Fees
The USPTO fee for conducting a patent search or prior art search varies according to the entity size. The fee is less for small and micro entities, so to say it’s less for individual inventors like yourself. ($40 to $700)
The snapshot presented below is from USPTO’s website that shares complete details of patent related fees.
Depending on the type of patent, the fee is different: Utility, Design or Plant.
Here are quick definitions for different types of patents based on which you can decide which category does your invention fall in.
It protects process, manufacture, composition of matter and a useful machine.
It protects the shape, appearance, patterns, design, layout or looks of the product.
It protects a new and unique plant’s key characteristics from being copied, sold or used by others.
How To Conduct A Prior Art Search Yourself With Zero Budget?
To conduct a comprehensive prior art search you either need money or skill. With money you can hire an IP research firm to conduct the prior art search for you. With skill you can use other prior art search engines that require you to create sophisticated keyword search strings and go through hundreds of documents to find relevant prior art.
However if you just want to determine the novelty aspect of your invention, you neither need money nor skill.
Yes you read it right!
We would say, don’t go by our words, try it out yourself!
A quick search on PQAI (An Initiative by AT&T ) is enough for you to determine the novelty of your invention.
3. Let’s try a sample query. How about – “A machine learning based system to sort out the waste based on the images captured by the camera in the past”?
Now, let’s take a look at the snapshot presented above. We actually found a prior art similar to the invention query we entered.
4. The best part is each result shows the claim mapping. That means, the relevant section in the prior art document that matches with the invention query. This makes it super easy for the researcher to look for matching elements between invention and the result.
5. Each result is accompanied with the following options:
Save – Just like you bookmark the webpages, you can save the results. Saved results are available for your future reference.
Find Similar – This option helps in further refining the search results. As the name suggests you get to see 10 more similar results matching that selected result.
View Document – With this option, you can view the selected result document in a new tab. Example: If it’s a US patent, you will be directed to the Google patents link for the selected patent.
Feedback – With a thumbs up or thumbs down, you can give feedback on the relevancy of the result.
Once you establish the novelty of your invention, the next step is to fill the invention disclosure form. An up-to-date invention disclosure form shall help you prepare for a meeting with a patent attorney.
Let’s Sum It Up
You don’t want USPTO to reject your patent application because someone else has already patented an invention like yours. To ensure the same it’s necessary to find out if your invention is new before you file a patent over it. The easiest and the most cost-effective way to do so is using PQAI Prior Art Search Engine.
Besides determining the novelty of your invention, you need to check your invention for patentability. You need to make sure that your invention is a patentable subject matter.
Conducting prior art search benefits you in many other ways than just novelty determination. To name a few:
Conducting a prior art search early in the process shall help you save resources which would have been otherwise used in pursuing it for patenting. As it won’t make financial sense if someone else has already patented it.
When you read the patents on the invention like yours, you shall be in a better position to refine your idea. And refine it in a manner that it’s new and non-obvious.
If you have any queries around prior art search using PQAI, feel free to write to us “[email protected]”.