Searching For Answers In BlackBerry Patent
Because of the now famous “BlackBerry” patent dispute, the world is beginning to look at patent and prior art searching with a whole new set of eyes. What was once considered a checklist item in patent prosecution and a reactionary item in patent litigation is now being considered an important part of the product development and innovation process. And the really powerful thing about the Blackberry dispute is that it involves three of the top types of patent and prior art searching: patentability (often called preliminary novelty), invalidity (often used in connection with defense of a patent case), and product clearance.
It has been said that if subjected to the strict scrutiny of patent litigation, 50% of all issued US patents would be invalidated. That statistic might be high (and it might be low). But let’s say it’s high. Let’s say that the real statistic is 45% or 40% or even 35%. In each case, that number is way too high. It’s unreasonable that a business should have to buy an asset…a US patent, and only have 50% certainty that they can actually enforce their ownership rights. It’s hard to make business decisions when there is only a 50% chance that your patent is valid …especially when the patent(s) is a critical factor in the business decision. For example, should a venture capitalist invest in a start up that has no revenue, but a large patent portfolio? Should a company consider the value of an acquisition target’s patent portfolio when determining a purchase price? Even if there is only a 50% chance that the patents will be enforceable?
In the BlackBerry case, several of the patents NTP asserted against RIM have been invalidated. Wow! Think about that. NTP invested a lot of money to get the patents in the first place. They received a certificate from the PTO saying that they have a valid patent. Then, after investing even more money to enforce the patents, the patents were deemed invalid because of prior art. Clearly, there are no guarantees. And because of the fact that getting a patent provides no guarantees, a greater emphasis on the patentability search might be warranted
Typically, companies either don’t do a patentability search, or spend no more than $1,000 on their patentability search. If you consider the cost of the patent to be $12,000 to $15,000, then the $1,000 investment seems reasonable. But, if you consider the costs associated with relying upon a patent that is unenforceable, which can be much, much higher than the costs of merely obtaining a patent, then the $1,000 patentability search might not be enough. It might be worthwhile for companies to invest more upfront in the patentability determination. Especially since patent examiners often don’t have more than a few hours to conduct their patentability search (patent examiners are extremely busy).
Another prior art search that is relevant to the BlackBerry case is the invalidity search. Obviously, RIM has done some pretty effective invalidity searching. But, even with their success, they have not succeeded in invalidating ALL of the NTP patents in the US case. Ultimately, it only takes one. One valid patent can bring a business to its knees.
The third prior art search that is relevant to this dispute is the product clearance search. Essentially, a product clearance search is a search to determine whether there are any patents that would be infringed if a new product or service is made, used, or sold. Ideally, a product clearance search is completed in connection with the new product development process. In this way, if problematic patents are discovered, informed decisions can be made. You may choose to invest resources in doing a design-around. You may choose to go in a different direction all together. Or, you may choose to get a license and avoid the risk of litigation all together. But, at least by performing a product clearance search early in the process product development process, all options are open. Once you get too far down the road, investing in research, product development, marketing, business development, it gets more difficult to make good decisions when that problematic patent is discovered.
