A Process for Managing Prior Art References

The law requires an Applicant for a U.S. patent to disclose to the United States Patent and Trademark Office to closest known material prior art references. When a patent is litigated, one of the most common defenses is to argue that the Applicant failed to do that and so deceived the Patent Office. Such failure renders the patent unenforceable. Separate from all that, a patent is strongest when it faces and overcomes the closest prior art during prosecution before the Patent Office. All this is powerful incentive to properly disclose the closest known prior art.

But medium to large size companies may own dozens, or hundreds, or even thousands of patents. The prior art that was considered in each of these may also be highly relevant to the current patent applications of that company. It would be cost prohibitive to closely review many hundreds of previously cited prior art references for each subsequent patent application. So the question is, how does one determine the closest prior art from an every growing jumble of many earlier possibly relevant prior art references?

I am not aware of any easy answers. Some attorneys create and maintain ever growing spreadsheets of prior art. For each pending application they aspire to somehow review their spreadsheet to determine what they will cite to the Patent Office. For other attorneys, they basically cite many hundreds of references in each case without determining the specific relevance of any of them (a practice I personally abhor and condemn).

For my own largest client, I use a litigation document management tool—Summation—to cross-reference and track all their prior art. Initially setting this up was quite time consuming, for each case, every cited reference was scanned and entered into the Summation database. And each reference is cross-tagged with all the other cases it ahs been cited in. Each month, a paralegal reviews all the substantive activity in the client’s matters and updates the Summation database.

Then for each new case for that client, I review the subject matter of the claimed invention and determine a list of somewhat related past cases. Sometimes, it is helpful to consider what prior cases we have handled for each inventor. This produces a handmade set list of possibly related cases. I then search the database for every reference cited in this set list. The results screen allows me to view at least the first page of each reference and at least momentarily consider its potential relevance to the case at hand and select any thing potentially relevant for inclusion in an Information Disclosure Statement (IDS) to the Patent Office.

My IDSs produced by this process can still be quite large, but at least I considered each reference and had a genuine reason for including it.

Honestly, the whole process of managing and citing prior art references can become enormously burdensome. But it does have to be done. Sorry about the cost…..