A patentabililty opinion is a written document outlining a patent attorney’s stance on whether or not an invention is patentable. Typically, a patentability opinion is created based on a prior art search. Ideally, a patentability opinion should address the potential implications on patentability of each item returned by the prior art search.
What is the Purpose of a Patentability Opinion?
The purpose of a patentability opinion is to provide inventors with a rough idea about the state of existing prior art as it pertains to their invention. Obtaining a patent is expensive, time consuming, and resource intensive. Before diving in head first, it can be helpful to know what to expect for roadblocks along the way. A well drafted patentability opinion can do just that.
Patentability Opinions Provide an Overview of Existing Prior Art
Before a patent can be granted by the United States Patent and Trademark Office (“USPTO” or “the USPTO”), it must first undergo examination. That process is known as patent prosecution, and can be quite lengthy. During patent prosecution, if the USPTO decides that an invention is not patentable, it is required to support its position with citations to prior art. The goal of a patentability opinion is to find out ahead of time what, if anything, the USPTO is likely to cite.
Insight Into Prior Art Helps Predict Timing, Cost, and Patent Value
Patent prosecution is essentially a cycle wherein (i) the patent office examines an inventor’s application for a patent, then (ii) provides the patent applicant with reasons that his invention is not patentable, to which (iii) the applicant responds with arguments in favor of patentability. This cycle repeats (with certain limitations) until either the patent application is abandoned or a patent is granted.
As shown in the graphic above, upon filing a patent application with the USPTO, the application enters what we will call “The Circle of Patent Prosecution.” The Circle begins with Examination, whereby the application is reviewed by a patent examiner at the USPTO for compliance with patent laws. The most common reasons that a properly drafted patent application will not comply with patent laws is that it disclosed either an invention that someone else has already made (a “102 rejection”) or an obvious variant of such an invention (a “103 rejection”).
Both 102 rejections and 103 rejections must be supported by references to specific pieces of prior art. For example, if the USPTO claims that an invention has already been invented by someone else and is thus patent ineligible pursuant to 35 U.S.C. 102, it must disclose to the patent applicant which existing patent (or other piece of prior art) it has based that conclusion on.
A patentability opinion is essentially a scrimmage where the attorney who will be prosecuting your patent takes the position of the Patent Office to give you a better idea of what you may encounter.
Knowledge of Existing Prior Art Can Provide Insight Into Timing
Patent applicants will typically receive a first USPTO Office Action within six months of filing. Upon receipt of such an Office Action, the applicant has up to six months to respond. While the precise timing of things can vary quite drastically depending on a number of factors, suffice it to say that the patent procurement process can take some time.
Not surprisingly, the complexity of the USPTO’s rejection often plays a role in how long it takes for an Office Action to go out. The more prior art references the examiner deems pertinent to patentability, the more complex rejection is likely to be, and the longer prosecution is likely to take. Conversely, where barely any prior art references are relevant to the claimed invention, prosecution tends to go faster.
A patentability opinion can thus help give inventors a better idea of their prosecution timeline by providing insight into the number and relevance of prior art references an examiner may cite.
Knowledge of Existing Prior Art Can Provide Insight Into Costs
As described above, having many prior art references cited against an application can increase the time it takes to prosecute that application. Just as these many references make it more difficult for a patent examiner to draft an Office Action describing how these prior art references act to preclude patentability, they also make it more difficult for a patent attorney to respond to.
Typically, patent attorneys charge more to write a response to a complicated Office Action than they would for a simple one. Consequently, where multiple references are cited as prior art in an Office Action, costs increase. Additionally, where rejections in complex multi-reference Office Actions are successfully overcome, it is not uncommon for the Patent Office to present new grounds for rejection. As these new grounds for rejection will require a second response, costs can increase even further. This can go on for quite some time.
Exacerbating the problem even further, the typical filing fee covers only prosecution up to the first Final Office Action (a Final Office Action is sent after the same rejection has been made twice). After the issuance of a Final Office Action, additional fees are required to avoid abandonment and continue with prosecution. A patentability opinion provides a rough overview of the state of pertinent prior art, thereby enabling inventors to get a better idea of prosecution costs early on.
Knowledge of Existing Prior Art Can Provide Insight Into The Value of Any Patent That May Issue
The value of a patent extends only to that subject matter which its claims protect. Where many pieces of prior art bear pertinently upon a claimed invention, the odds of meaningful protection decrease. This is because any allowable claim must necessarily be drafted around what has been disclosed by prior art. Because broader claims provide more protection than do more narrow claims, an application in which allowable subject matter was gleaned through drafting around prior art is typically considered less valuable than an application in which drafting around prior art was not necessary.
A patentability opinion can provide insight into what types of similar inventions are already out there, and how similar those inventions really are from a legal standpoint. As such, a patentability opinion can be a preliminary indicator of the extent to which existing prior art bears relevantly upon an invention, and thus to what extent claims may need to be narrowed. Insofar as the breadth of any allowed claims is important to the business strategy underlying patent procurement, a patentability opinion can be loosely predictive of patent value.
Potential Downside of Obtaining a Patentability Opinion Prior to Filing
Cumulatively, obtaining a patentability prior to filing is generally beneficial for most patent applicants. However, there are some potential downsides to obtaining a patentability opinion. In our opinion, these detriments do not even come close to outweighing the benefits of a patentability opinion. That said, we believe that it is important for entrepreneurs to understand all sides of a decision before committing. The following is presented with the goal of enabling such an understanding.
A Favorable Patentability Opinion Does Not Guarantee That A Patent Will Issue
Patent prosecution is an imprecise art, and its outcomes are therefore difficult to predict. On top of the more obvious issues surrounding whether an examiner can be convinced by an attorney’s arguments in favor of patentability, divergent search strategies and disparate access to certain classes of prior art add additionally to the uncertainty. In short, even a favorable patentability opinion is not a guarantee of patentability.
It Is Possible That The Patent Office Is Unable To Be Persuaded By What A Patent Applicant And His Counsel Believe To Be Strong Arguments In Favor of Patentability
As anyone who has ever followed a big trial in the news is aware, sometimes strong arguments fail inexplicably (“If the glove don’t fit…!”) and against all logic (“Probably guilty; possibly guilty: that means ‘not guilty!’“). The same is the case in patent law.
Sometimes an examiner will not understand the distinction between a bimodal distribution of particles and a binomial distribution, even in view of an expert affidavit presenting a statistical test to differentiate the two. Other times, an examiner may interpret an intended structural distinction as functional language and impart a 35 U.S.C. § 112(f) interpretation despite deep disagreement by the applicant and his counsel.
It Is Possible That The Patent Office Uses A Search Strategy That Unearths Different Prior Art Than That Addressed In Even An Exceedingly Well-Done Patentability Opinion
As is clear from the immense volume of Google search results regarding patent prior art searches and how best to go about them, there is no single correct way to perform a patent prior art search. As proponents of these varying methods correctly claim, differing methods produce different results, and some methods are better than others. Thus, it is entirely within the realm of possibility (and perhaps even likely) that the patent office unearths during it search some piece of pertinent prior art that was missed by the patentability opinion.
It Is Possible That A Non-Public Piece Of Prior Art Becomes Public During Prosecution And Cited Retroactively
It is possible that a non-public piece of prior art be properly cited as the basis of rejection retroactively once it has been published. Here are the implications of this: it is entirely possible that a patentability opinion does not catch an on-point reference that ultimately precludes patentability because said reference was not available to the public at the time of the patentability search. It is also possible that such a reference not be cited in the first Office Action. This strange result occurs because of the wording of 35 U.S.C. 102(a).
Pursuant to 35 U.S.C. 102(a), a person shall not be entitled to a patent (necessary implication of the above) if a (1) published application by (2) another inventor (3) has an earlier effective filing date and discloses the invention for which a patent is being sought. Because patent applications are not published for 18 months from after they are filed, it is very possible that an unpublished piece of prior art is just sitting in the Patent Office waiting to be cited against you in a few months. Scary.
While it may not seem entirely fair that a non-public disclosure of which an inventor could not have possibly had knowledge should preclude his obtention of a patent, this approach is in line with patent laws in the rest of the world. United States patent laws are more lenient than in most other countries, and were even more-so prior to the advent of the Leahy-Smith America Invents Act (known colloquially as simply the “America Invents Act,” or “AIA”). Although individual investors whose resources are small relative to their more established counterparts may be disproportionately disadvantaged, the global impact of these changes has been largely positive.
A Thorough Patentability Opinion Could Alert An Incompetent Examiner To Prior Art Of Which He May Otherwise Not Have Been Aware (This Is Actually A Good Thing In The Long Run!!!)
Another potential concern regarding patentability opinions (that inventors raise much more frequently than patent practitioners) is that an examiner might be alerted to a piece of prior art of which he may otherwise not have been aware. This concern stems from the requirement that every relevant prior art document of which the applicant, his attorney, or anyone else involved in the prosecution is aware must be disclosed to the Patent Office.
Because failure to make such a disclosure can result in invalidity even after issue, it is important to abide by this requirement. Consequently, each piece of prior art discussed in a patentability opinion must be disclosed to the Patent Office.
This is a good thing.
Patent prosecution is better conceptualized as adversarial advocation towards a mutually held goal of allowing every inventor the full extent of whatever rights to his invention are proffered by law. An overly broad claim that will crumble if challenged is worth nothing to its owner and is damaging to all other inventors who may be dissuaded from innovation by its issuance. A claim which is allowable over every properly citable piece of prior art is a stronger claim than one in which some properly citable piece of prior art has not been considered.
Providing the Patent Office with additional pieces of prior art that it may miss is good for all involved.
Typical Cost of A Patentability Opinion
The typical cost of a patentability opinion varies both by the patent law firm who drafts it and the complexity of the invention regarding which a patentability opinion is sought. At Mutchler Patent, our fees for a patentability opinion are broken into two parts: a search fee, and an opinion fee. Both vary concomitant with complexity, but our typical search fee will range between $500 and $1000, and our typical opinion fee will range between $500 and $1500.