eBook “Patent Mining Searches”

I have published an eBook titled “Patent Mining Searches” — it’s available via Amazon.com for any device via Kindle. It’s available for free via Kindle Unlimited.

“Patent Mining Searches” is intended for patent searchers, analysts, and researchers who mine for relevant and valuable patents.

“Patent Mining Searches” is a go-to quick reference, and the book explains:

  • types of patent searches
  • mining search processes
  • mining search tips
  • use of metrics in mining searches
  • search and analysis tools

Patent Mining Searches eBook

EPO Patent Information Conference

For the past few years I have enjoyed attending the European Patent Office’s (EPO) annual Patent Information Conference, which is held in a different European city each year. In 2015 it was based in Copenhagen, and in 2016 it was held in Madrid. This year (2017) it is held in Sofia, Bulgaria. There are several training sessions along with discussion rounds covering a variety of topics, such as patent-related searches, freedom to operate assessments, patent analytics, patent asset monitoring, and of course patent information and evaluation tools. As described in an earlier post about European patents, as a US-based patent analyst I find it beneficial to continue to stay informed about the latest developments in European patent law and data. This annual conference provides me with the opportunity to learn, and I also have met many great patent professionals at these conference events. Additionally, there are dozens of excellent exhibitors showing off their latest patent information and analysis software and services.

Europe is my home away from home, and I love spending time there and exploring new cities, as well as learning from peers. This conference is also relatively inexpensive compared to most patent conferences in the US.

Please let me know if you plan to attend this year’s (or any future year’s) EPO Patent Information Conference, and I can plan to meet you for a chat.

Published Article: “Three Areas of Intellectual Property You Need to Understand”

Prior to my attendance and panel participation at the SUITS conference in August 2013, TMC published an interview they did with me titled “Three Areas of Intellectual Property You Need to Understand” — this article is available here: http://www.tmcnet.com/topics/articles/2013/08/15/349616-three-areas-intellectual-property-need-understand.htm. Much of what is published there has been covered in earlier posts on this blog, such as in “Clearance Search Review” and “Invention Disclosure Highlights and Considerations”.

However, there is also additional new perspective pertaining to the biggest misconception in terms of how companies can understand, enforce, and protect their patents and intellectual property. This largest misconception in terms of how companies can understand, enforce, and protect their intellectual property is one held by a large portion of companies’ R&D engineering communities – that is, that an inventor’s novel and non-obvious invention is obvious and one that would have been formulated by any other engineer in a similar situation. This misconception leads to many inventions never being considered for patent protection. The issue can at least partially be overcome by continual inventor training to educate engineers to recognize the features of designed products and services that indicate the desirability of protecting aspects of these designed products and services with patents. This training should include information about patents, their history and intent, patentability rules, and examples of patented solutions within the given company’s technology areas. In particular, patent examples often inspire an “aha moment” within engineers that lead them to become prolific inventors and patent protectors.

Patent Mining Search

An earlier post provides an overview of the various types of patent-related searches [Link], and another post summarizes some typical high-level steps taken in performance of a patent search [Link]. The following closely follows the overall search process described in the earlier post, but here concentration is on patent mining searches specifically.

A mining search is carried out in order to find and gather related patent assets — mining searches are usually performed for at least one selected technology area. This type of search is often executed on behalf of an entity which owns many patent assets and which may therefore not be fully aware of the scope of their portfolio. The patent assets uncovered in mining searches may then be rated, and these ratings can be leveraged to gather related assets for licensing or divestiture collections, and can also be used for maintenance decisions. Patent mining searching is an iterative process requiring continual refinement throughout searches, and it is often scoped to conclude with a set of a specific number of relevant patents which will then be reviewed in further detail. Sometimes the objective is to find all patents within a given technology area, but normally the objective is to find a specific number of patents within a given time limit. The scope of a mining search is not always limited to one owner’s portfolio, and for acquisition considerations, a mining search may include patents from a set of owners or even from any owner. Sometimes a limitation is put on searches to find only those patents with a specific amount of residual in-force lifetime.

Not all steps below necessarily need to be performed in the order listed, though this order has been shown to work well. Nor do all steps need to be performed at all – in practice, some search refinement often must be skipped due to time constraints. A patent analyst should continually consider the most productive path for gathering the strongest final set of patents based on what is discovered through search results along the way, and based upon given time constraints.

The set through which to search may need to be limited to one or more specific assignees or to one provided patent set.

1. Review technologies and target companies/products associated with the project. This step should definitely be performed first.
2. Formulate keywords and Boolean queries. Be prepared during searches to further refine the keyword set and Boolean queries.
3. Become familiar with patent search software functionality (if needed for the given software).
4. Perform searches using various keywords and Boolean query combinations. Perform first-pass searches using very targeted keywords and Boolean queries so as to find what may be the strongest matches up-front. Using these strong matches, you can leverage these patents to determine relevant patent classification codes and to perform semantic searches later. This step may be considered complete once all technology areas have been sufficiently searched.
5. Search using relevant USPTO/WIPO/EPO classifications (USPC, IPC, CPC). Relevant class codes can be manually determined through selected patents, and some patent search tools will indicate the most prevalent class codes in a patent set.
6. Search using the most relevant and prolific inventors found so far.
7. Search using cites/cited for patent references — reverse and forward citations, respectively.
8. Perform semantic searches using text from some of the best assets. Patent search software tools that provide semantic search functionality are recommended.
9. Know when to stop. This is probably the most difficult step, though budgetary constraints will often dictate this step. One good method to know when to stop is to see how the semantic searches pan out. If results from the semantic searches align well with earlier findings, then consider the search to be complete — if not, and the results appear to open another avenue, then continue refinement and searches until results become much less productive (i.e., the same assets keep showing up and new searches result in little or nothing new), within the budgeted time window.
10. Pre-filter the current asset set to eliminate patents that can quickly be dismissed and to get down to a specified number of results, if any.
11. Consider capturing family members of the most relevant references (siblings, parents, and children). You may wish to skip this step for now and only come back to it in a subsequent phase once most patents have already been filtered out. The reason being that patent families often fall together, and having too many assets in the same family might push out more relevant assets. The risk with not including family members is that a less relevant family member may be filtered out without providing the opportunity to review a well-aligned relative.
12. Collect and output the resulting set for next-stage analysis.

 

Forward Citations as a Patent Relevance Metric

For a given patent (or patent application), a forward citation is another patent document’s citation back to that given earlier patent (from the perspective of the given patent). For a patent application, the associated patent applicant(s) and patent examiner(s) must disclose and cite existing references that may be material to the pending patent application, including patent document references. A citation can imply that the cited reference anticipates or renders obvious one or more claims of the pending application, or it may just denote that the cited reference discloses aspects related to a technology area associated with the pending application.

I have often heard from patent professionals that the number of forward citations that a given patent has is a strong indication of its relevance. In my experience, the number of forward citations metric often indicates something other than the relevance of associated claims within that patent document. First, one must consider that more-recently-issued patents will not have had much opportunity to be cited yet, which means that comparisons of forward citation metrics need to be limited to patents issued within a relatively narrow time frame. Second, with a duty to disclose, some patent applicants and practitioners cite many more references than might be needed or expected, and as such will include several patent references where the cited patent is not of particular relevance to the pending patent application. Next, in my experience, patent examiners will find “favorite” patent documents that have a large omnibus specification and describe well the state of the art at the time of application filing, but citations of these patent references indicate nothing about allowed/issued claims of these references. In fact, patent examiners do not normally specifically point to claims themselves, but to patent specifications and drawings, which means that there is no qualitative assessment of the claims themselves for a citation. Because the claims define the scope and value of an associated patent, and since the examiner is not referring to the claims in citations, one cannot read much of an indication of relevance into such a citation. Last, some large corporate patent filers have large collections of their own references in various technology areas to include in Information Disclosure Statements (IDS), thereby citing many of their own patent documents without specific regard to the actual relevance of these citations.

For these reasons, I always take the metric of the number of forward citations with a healthy pinch of skepticism — there is no substitute for actual claim analysis by an expert in the associated technology area. One numeric metric I find much more often indicative of relative patent quality (within a technology area and particularly within a patent family) is the number of words in independent claims — I’ll leave this discussion for another day.

For more information and perspectives, see:

I welcome your insights.