As part of a program to reduce risk of infringing third-party patent claims, a company can conduct freedom-to-operate (FTO) searches. Sometimes an FTO search can reveal that a patent application is pending that seeks extremely broad claims that would impinge on the freedom to operate by the company with respect to a particular product or service.
A company can set up automated searches to look each week for newly published applications so that applications with broad claims are identified early.
Once a problematic patent application is identified, the client or FLYNN IP LAW can monitor the progress of the patent application through a system known as PAIR to see whether the overly broad claims are rejected or at least amended to have an appropriate and much narrower scope. As the claims are rejected or narrowed, the client can make adjustments to plans as appropriate. In some instances where the patent claims were initially ridiculously broad, the narrowed claims may not be a problem as they are now limited to products or services that have a very specific nuance or quirky feature.
An option exists to assist the United States Patent Office examiner to reject overly broad claims. Third parties can submit relevant prior art if done so within six months of publication of the patent application with the broad claims or before the process of examining the patent application reaches certain milestones.
Many litigators would prefer holding killer prior art up their sleeves until used at trial, as there is a risk that a patent examiner may not fully appreciate the relevance of submitted prior art. If the patent examiner erroneously signs off that a patent claim is allowable over a piece of prior art, that patent claim has a presumption of validity over that piece of prior art.
Holding prior art references for use at trial is fine for a company with a huge budget for patent litigation, but that is an unusual company. Most companies prefer to narrow potentially problematic patent claims through this relatively inexpensive submission process during the examination of the application.