During the patent examination process, I find that examiners rarely use prior art products as references. Instead the focus is on literature and thus, in the case of products, on product documentation such as user manuals, FAQs, etc. I find this to be problematic because product documentation does not and cannot cover every subtle aspect of all the features and functions of a given product. Therefore, reliance on non-patent product literature is covering only a subset of the prior art associated with a given product, whereas the product itself can be used to demonstrate anticipation of claims in a patent application under examination.
There have been occasions when I have been analyzing a given patent and can find a prior art product that seems to anticipate the patent’s claims. In these cases the product’s literature does not sufficiently describe or demonstrate the functionality covered in the patent while the product itself appears to.
This seems to me to be a fundamental problem with the examination process, and therefore a potential issue with a granted patent’s presumption of validity. Of course, examiners do not have access to many prior art products, particularly those that are costly, rare, large, etc. However, when a patent is asserted, the accused party will often go much further than would an examiner in looking not so much for literature as for products to use defensively in order to raise questions of validity. Certainly one of the first places I look in validity searches is for products, as I know that the examiner has likely not done so. This is despite 35 USC 102(b) :”A person shall be entitled to a patent unless …the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States…”
In fact, disclosure and examination forms such as the USPTO’s Information Disclosure Statement (IDS) (form PTO/SB/08a) (submitted by the patent practitioner) and the Notice of References Cited (form PTO-892) (provided by the examiner) only include table fields explicitly denoted to be used for documents. How does one then go about citing a product?
What are the readers’ thoughts on the concentrated patent examiner reliance on literature and not on existing products when searching for and analyzing prior art? And how do practitioners list a product in an IDS? What do examiners think about this lack of product citation? Is it indeed an issue? I look forward to your comments.