Post by Janet Freilich
Ted Sichelman has written a response to my earlier post on whether there are too many patents to search. He argues that the problem of patent searching is smaller than I suggested. He includes an excellent critique of Christina Mulligan and Timothy Lee’s article on patent search costs and provides some much needed numbers on the magnitude of search time and costs. I agree with him on many points, but I stand by my conclusion that clearance searches are very difficult, if not impossible.
Sichelman notes that it only takes a few minutes to review a patent, so conducting a search and then reviewing a large number of results is not too onerous. He is correct that it will often only take a few minutes to determine whether or not a given patent is relevant, however, my sense is that the real problem is not only in reviewing the patents you find in the first search (which may get you 95% of the way to clearance), it’s in finding the last 5%. Those are the patents that use non-standard vocabulary or otherwise cover the product in unexpected ways. You have to slog through a lot of unrelated results and useless searches in order to be completely confident that you haven’t overlooked any of the results. Patentees can famously be their “own lexicographers” and “redefin[e] the meaning of particular claim terms away from their ordinary meaning” as long as the term is defined elsewhere in the patent. Merck & Co., Inc. v. Teva Pharms. USA, Inc., 395 F.3d 1364, 1370 (Fed. Cir. 2005).
For example, if you wanted to know if you could freely manufacture a table, you could search for patents claiming the word “table.” However, a patent could accurately describe a table as a “horizontal surface having at least one vertical leg.” If you didn’t know beforehand what language was being used, how would you find that patent?
The problem with patent searches is that if you miss even one patent that covers your product; you don’t have legal clearance to manufacture. Different industries differ in how thoroughly they require clearance searches, and my sense is that thoroughness is generally more important in the life sciences.
Sichelman also notes that there is technology being developed to help with patent searches. This is a fascinating and welcome development, and it is important that the problem be tackled from both technological and legal angles. I am eager to see the interaction between legal technology and legal rules discussed more in the academy. I am also curious to see how the law, especially malpractice law, adapts to patent search technology.
I am not aware of malpractice litigation relating to patent search technology, however, a case relating to a manual patent search is instructive. In Carabotta v. Mitchell, 2002 WL 42948 (Ohio Ct. App. Jan. 10, 2002), the client sought a patent attorney’s opinion on whether a specific type of umbrella could be manufactured in the United States without patent infringement. The attorney’s clearance search returned approximately 1000 patents, which the attorney “flipped through,” scanning the title page and drawings. Although the attorney’s search returned a patent covering the client’s umbrella, the attorney did not notice that it was relevant and advised his client that he had not found a patent covering the umbrella. The client eventually realized he did not have clearance to manufacture and sued the attorney for malpractice. The outcome suggests that opinions on the question of malpractice were split. The jury found for the attorney, the trial court granted a motion for a new trial, commenting that the attorney’s “efforts fell well below the standard of care,” and the appeals court reversed and remanded with instructions to reinstate the jury’s verdict.
E-discovery might provide a guide. There, the overproliferation of documents led to technological development but also novel legal questions and types of malpractice suits. As an increasing number of documents were stored electronically, and written electronic communication increased, the number of documents retrieved during discovery became unmanageable. Furthermore, the standards for gathering and storing electronic information were far from clear. In response, technology companies developed methods for sorting through electronically stored information at issue in litigation. Also in response, the Federal Rules of Civil Procedure were amended to ease the difficulties posed by electronically stored information.