This week I joined the Professional Services Office team at Asheville-Buncombe Technical Community College’s Small Business Center Incubator. Once per month I provide free one hour counseling sessions to clients of the Small Business Center to help these clients understand what their options are with regard to obtaining patent protection for their inventions.
About one month ago I posted on this blog about some problems with non-patent literature [Link]. I also included a link to that post on the LinkedIn “Patent Searching” group, which spurred a lot of continued discussion from multiple members of that group. Those comments are not shown on The Patent Analyst blog, but are available for review on the “Patent Searching” LinkedIn group. I can recommend this particular group for those that are interested in patent search discussions and job opportunities — a link to the group is available here. Note that you will need to be a member of LinkedIn and of the “Patent Searching” group to peruse the discussions. Enjoy!
As a follow-up from a previous post on types of patent searches [Link], this post discusses some techniques for reviewing patent documents (both patents and patent applications) for potential relevance for a given product, and the post provides some choices for action taken in case a patent document is deemed relevant based on the review.
A preliminary review of a given patent document helps to form an initial interpretation of what the scope of the claims is. Intrinsic evidence is used to determine the claim meaning, with this type of evidence including e.g., the specification and listed embodiments, the document’s prosecution history, cited prior art, other claims within the patent document, associated patent litigation, and associated parent/sibling/foreign filings. The ordinary meaning of each claim is construed from the perspective of a person having ordinary skill in the art (PHOSITA) for the time period of the invention. However, an inventor in the patent document specification can expressly define terms differently than their ordinary meaning, and the specification may explicitly disclaim some embodiments. Of course means-plus-function claims are limited the structures and equivalents contained within the spec. Also, during patent prosecution the patent owner can surrender claim scope.
Extrinsic evidence such as a dictionary definition or expert testimony, or even inventor testimony, can be used to determine the claim construction if it does not contradict the intrinsic evidence. The proper construction is weighed heavily toward the intrinsic evidence such as those listed in the paragraph above.
If a patent document under review seems potentially relevant to a given product (planned or existing), then there are various options that could be entertained, each with its own associated trade-offs:
- Performing a workaround so as to avoid possible infringement, if such a workaround is feasible. Any workaround considered should be analyzed to ascertain its impact on the product — its impact on cost, quality, and timeliness of the product should not be more detrimental than other possible routes, such as obtaining a license. Also, it is often advisable to obtain a written opinion from external patent counsel on the non-infringement of the workaround on the patent.
- Forgoing the product altogether.
- Licensing the patented invention from the patent owner, whether through monetary payment, cross-licensing of patents, etc.
- Obtaining an opinion from external patent counsel of prior art anticipation or obviousness of the patent. This type of opinion is more difficult to obtain, as in this case every claim needs to be shown to be invalid. Additionally, this type of opinion is certainly not rock solid, as the patentee can render the opinion moot such as through claim modification in a reexamination (e.g., adding an element to claims to avoid invalidity finding by examiner).
- Obtaining an opinion from external patent counsel of non-infringement. This type of opinion only has to show non-infringement of the independent claims, as a product that does not infringe independent claims cannot infringe the dependent claims.
- Taking a chance and doing nothing. The risks here are obvious, as there could be problems with “willful infringement”. Consider also that a given patent may not be in force due to a missed maintenance fee, but one needs to be careful here since patents can be revived.
None of these decisions can be taken lightly, and due consideration should be given to each. The above list is not meant to be exhaustive, as there are further considerations that can made in this situation. Additional suggestions are welcomed from readers.
An earlier post provided an overview of the various types of patent-related searches [Link].
This post summarizes some typical high-level steps (20 total) taken in performance of a patent search, with some steps more or less relevant (if even applicable) for each of the different types of searches. Of course, there are further actions that could be taken for each step, and there can also be some intervening steps. What’s primarily missing is the actual determination of potential relevance for each reference — this depends on the subject matter being analyzed, and can be quite difficult (as readers likely know).
(1) Review disclosure/description/patent document of interest.
(2) Extract keywords.
(3) Use thesaurus and web to add synonyms to the keyword list.
(4) Create Boolean searches using various keyword combinations, correctly utilizing the syntax for the database used (e.g., FreePatentsOnline, Delphion, USPTO, Google, AcclaimIP, etc.). Also, take advantage of additional tools such as word stemming, wild cards, proximity, term weighting, relevancy, etc.
(5) Determine the types of documents to search (often based on the type of search being performed): e.g., US patents, US patent applications, European patent documents, PCT documents, non-patent literature, Japanese abstracts, etc.
(6) Include any constraining limitations as needed, e.g.: location within patent documents (ABST, ACLM, SPEC, TTL, etc.); date range (APD) (e.g., for invalidity search); inventors or assignees (IN, AN); and classification (CCL).
(7) Perform searches based on the steps above.
(8) Analyze results from (7) — peruse the title, abstract, background, summary, claims, etc. as needed to ascertain relevance.
(9) Narrow or expand (4), (5), and (6) if needed based on results and re-perform (7) and (8). Otherwise, continue to step (10).
(10) Collect and save results — many databases allow searches and results to be saved for future review and performance.
(11) Review this batch for relevance using the claims.
(12) Narrow the list to the most relevant, and save this collection.
(13) Determine classification class/subclass(es) to search in addition from (i) the most relevant patent documents and (ii) reviewing classification manual.
(14) Contact examiner(s) to confirm and/or recommend class/subclass(es).
(15) Search using these classifications using the current classification field.
(16) Analyze results (as in step (8)).
(17) Collect and save results.
(18) Create a list of the most relevant.
(19) Use patent documents in this list to review:
- (i) “Cities” references
- (ii) “Cited” references
- (iii) Sibling and parent patent documents
- (iv) For the most interesting references, also see the prosecution history to gather even more references
- (v) Semantically-related references — e.g., using a search tool semantic analyzer such as Google’s Prior Art Finder or AcclaimIP’s semantic search
(20) Repeat steps (16), (17), and (18) as needed.
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.
There are various types of patent searches, with each requiring its own unique search process. Differences between search processes are primarily based on scope and publication dates. Some different search types are provided below:
A) Patentability: This type of search, normally performed after determining that an invention covers patentable subject matter and has utility, and that its potential return on investment warrants patent pursuance, focuses on finding prior art references that may be relevant to the invention’s novelty and non-obviousness. These prior art references comprise a wide array of materials, such as issued patents, published patent applications, journals and other non-patent literature, etc., and can have been made public at any point prior to the invention’s creation. A patentability search is also sometimes referred to as a “novelty search”, though “patentability search” is a better term because non-obviousness is also an important consideration.
B) Clearance: Also referred to as a “freedom to operate” (FTO) search, a “right to use” search, or an “infringement” search, a clearance search concentrates on uncovering enforceable patents that might act as “roadblocks” to commercialization of a product or service. A clearance search can also be used to uncover pending patent applications that, if eventually issued as patents, might be infringed by a given product or solution. From 35 USC 154: a patent grant confers “the right to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States” “…for a term beginning on the date on which the patent issues and ending 20 years from the date on which the application [or earlier priority application] for the patent was filed in the United States”. After the patent term expires the patent owner no longer has this right. Therefore, a clearance search can be limited in scope to those patent documents that are or may be enforceable when a given product or service is commercialized. Also, note that to remain enforceable throughout the 20 year term, an issued patent must have its maintenance fees paid at the appropriate intervals. Any potentially problematic patent documents can be addressed in a number of ways, including formulating a sufficient and non-infringing workaround, obtaining a license from the patent owner, obtaining an opinion of non-infringement or invalidity from a patent attorney, etc.
C) Validity: This type of search is similar to the patentability search in that part of its scope is to assess novelty and non-obviousness. In this case however, the assessment is made on a patent instead of for an invention. This type of search is often initiated either when a patent owner desires to assess the strength of a given patent in preparation for enforcement of that patent or when an accused infringer wants to ascertain the validity of an asserted patent. Other names for validity searches are “invalidity” search and “enforcement readiness” search. As with a patentability search, a validity search will include both patent documents and non patent literature.
D) State-of-the-Art: A state-of-the-art search is often executed in order to determine existing solutions and potential competitors within a given technological field. This type of search is sometimes referred to as a “collection” search, and includes not only patent documents but also non patent literature.
E) Mining: A mining search is carried out in order to find and gather related patent assets owned by an entity — 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.