Considering Kind Codes when Analyzing non-US Patents

In my patent analysis work, I am sometimes asked to review patent documents from jurisdictions other than the US, such as from Europe (EP) and the United Kingdom (GB).

A common error I have encountered when analysts in the US look at patent documents from other jurisdictions is that they review the wrong version of a patent document, thereby wasting their own and their client’s time. Counter to the USPTO’s practice of separate pre-grant patent application publication and granted patent numbering schemes (11-digit and 7-digit, respectively), many other jurisdictions use the same number for both published patent applications and granted patents. The way that these other jurisdictions’ patent offices (such as the EPO and UK IPO) represent the difference in the patent document identifier is through the use of a “kind-of-document code”, which is a one- or two-character suffix that follows the patent document number — e.g., GB2172127A vs GB2172127B.

For another example, EP patent applications are represented with a trailing “A” kind code, while granted EP patents are represented with a trailing “B” kind code. For EP patent documents, an “A1” indicates a European patent application published with a European search report, and a “B1” indicates a “European patent specification (granted patent)”. There are several other kind codes for each of the “A” and “B” kind code sets — for more details, see the EPO’s kind code help page. The USPTO has its own comparable US kind code list, and the World Intellectual Property Organization (WIPO) additionally has a comprehensive guide to patent kind codes.

The specific error that I have witnessed from a few other patent analysts is that they spend time reviewing the claim set of a published EP or GB patent application (i.e., kind code “A”)  instead of reviewing the claim set of the associated granted EP or GB patent (i.e., kind code “B”). Obviously analysis on an originally-filed or still-pending set of claims is likely to not be helpful for a client because the client wants to know how relevant the issued claims are, and the issued claims are very likely to represent some, if not many, modifications from the original claim set. The claims normally differ between these two, potentially substantially, so when analysts map or otherwise analyze “A” claims the work is probably incomplete and/or inaccurate. Part of the problem is that search tools such as Espacenet default to showing the “A” claims, even when the “B” version has been selected. To get to the “B” version of the claims, one must explicitly select such. The kind code B claims are only available in a PDF image at Espacenet and the UK IPO.

UPDATE: However, thanks to Google, this doesn’t mean that I have to OCR them and/or type them in when filling out reviews. Google Patents has support for EP and WO patent documents, including the claims. Google Patents provides kind code B claims in a textual format for simple copy-and-paste, and the Patent Claims Tree tool for the Chrome browser will parse these textual claims and provide a claims tree.

See the example screen shot below showing selection of the “B” kind code of a particular granted GB patent GB2172127, with the “A” kind code claims displayed instead — note that the indication of this is rather subtle (source: http://worldwide.espacenet.com/publicationDetails/claims?CC=GB&NR=2172127B&KC=B&FT=D&ND=4&date=19881012&DB=EPODOC&locale=en_EP, retrieved Feb 15, 2013):

GB patent kind code "A" claims
GB patent kind code “A” claims

Therefore, when performing patent analysis on non-US patents, it’s best to understand and leverage the kind code to ensure that you are reviewing the appropriate set of claims.

Patent News Feeds Android app

I have released an update to an Android mobile application RSS and Twitter feed reader for patent-related news from several of the most popular patent and intellectual property (IP) blogs. This Android app is provided and maintained for free by my patent analysis company Wolf Mountain IP (via Wolf Mountain Apps).

For more details on the application, see the Google Play page for “Patent News Feeds”.

UPDATE (March 2, 2016): This app has since been unpublished.

FeedsReaderSettings

Patent Analyst Venn diagram

Below is a Venn diagram I created in order to highlight some of the various differences in skills, knowledge, background, personality, and common responsibilities between a patent analyst role and a few related professions such as patent attorney, engineer/scientist, and patent paralegal.  The diagram is neither scientific nor comprehensive, and some overlaps are likely skewed percentage-wise. Also, of course some folks have multiple roles/skills (e.g., a patent paralegal with an engineering degree) – but the diagram is nonetheless fairly representative.  The point of view is from a patent analyst perspective, though personally I perform tasks as both a patent analyst and a registered US patent agent.  Additionally, differences exist between corporate and law firm professionals and between employees at larger versus smaller entities.

Example differences and overlaps:

1. A patent analyst needs to have a solid mix of technical expertise and patent knowledge and should also have an up-to-date awareness of the market and vendors in one or more technology areas, and a patent analyst needs to be able to perform detailed investigations to determine mappings of patent claims to corresponding products/solutions such as through reverse-engineering, product utilization, and/or documentation review.

2. A patent analyst and a patent attorney both need to understand the fundamentals of patents, such as patenting requirements, relevant dates, claim scope and language.  Both may be required to perform patent-related searches such as patentability, freedom to operate, invalidity, state-of-the-art, etc., and may be asked to review the potential relevance of a patented claim on one or more target products/solutions.

3. A patent analyst, a patent attorney, and an engineer/scientist each needs to have a solid background and understanding of one or more technology areas.  A patent practitioner, such as a patent attorney or a patent agent, must possess sufficient scientific and technical training such as having earned a Bachelor’s degree in a recognized technical subject.

4. A patent analyst and an engineer/scientist must both have a solid understanding of one or more technology areas.

5. A patent analyst, a patent attorney, and a patent paralegal must each have a fundamental understanding of patents, such as patenting requirements and relevant dates, though a patent paralegal does not need to understand the intricacies of claim language, and a patent analyst does not need to know the details of interaction with a patent office.

6. An engineer/scientist usually also has responsibility to manage and/or design and/or develop a technical product or solution.

7. A patent attorney additionally has a law degree and has passed a territorial law bar exam along with a patent bar exam and can represent clients in court and with the USPTO, and a patent attorney can provide legal opinions (such as patent non-infringement or invalidity).  Note that in the US a patent agent has passed the USPTO patent bar exam and can represent clients for patent application prosecution work with the USPTO, but cannot provide any other legal representation or provide legal opinions.  A patent attorney (or patent agent) can draft, file, and prosecute patent applications.

8. A patent attorney and a patent paralegal must both have a sufficient understanding of the main bureaucratic aspects of patent prosecution with one or more patent offices.

9. A patent paralegal often has a more detailed knowledge of the finer details associated with interaction with patents offices than might a patent attorney, and a patent paralegal works under the supervision of a patent attorney to assist with preparing and filing necessary patent-related documents.  A patent paralegal often possesses detailed knowledge of docketing software used to track patent assets.

Technology Areas

Below are example technology areas in which I perform patent analysis.

Mobile Technologies:
Mobile devices, mobile user interface, location-based services, navigation guidance, mobile social networking, mobile advertisements, mobile messaging, smart cards, near field communication (NFC)

Web Applications:
HTML, XML, XSLT, CSS, JavaScript, PHP, MySQL, SQL, RSS/ATOM, AJAX, web services, web servers, web television, data visualization/reporting

Mobile Application Platforms:
Android, J2ME, BlackBerry, iOS, BREW

Data Communications:
IP, TCP, HTTP, UDP, Ethernet traffic analysis, DNS, data link control, packet switching, circuit switching, routing protocols, SIP

Messaging:
SMS, instant messaging, electronic mail, MMS

Wireless Communications:
3GPP (UMTS and LTE), 3GPP2, IEEE 802.11 (Wi-Fi)

Security:
cryptography, e-commerce

Software:
Embedded systems, RTOS, C, Java, Perl, Visual Basic, Object-Oriented Design

Patent Claims Tree tool

I recently published a Chrome browser extension that provides a patent claims tree for a given patent document — this tool is available here.  I developed the tool for myself, and I find it quite handy in my daily patent analysis work, so I thought I would share it with the patent community for free.  I hope you like it.

Features:

  • Supports the following websites:
    • USPTO
    • FreePatentsOnline
    • Google Patents
    • ArchPatent
  • Displays the type of claim (e.g., apparatus, method, system, etc.)
  • Displays the word count for independent claims
  • Highlights the claim with the shortest word count
  • Displays a means-plus-function (MPF) language indication (searches for word “means”)
  • Links to USPTO Assignment database for the current US patent document.
  • Links to USPTO Maintenance Fees for the current patent.
  • Links for searching for US patent litigation associated with the patent.
  • Links to Google Patents PDF for the current US patent document.
  • Links to Google Patents Prior Art Finder for the current US patent document.
  • Links to FreePatentsOnline for the current US patent document.
  • Links to EPO Register for EP patent documents.
Patent Claims Tree Chrome extension
Patent Claims Tree Chrome extension

Background section scope

I am of the opinion that at least in the US, it is good practice to minimize the amount of information provided in the Background section of a patent application.

I prefer to not include a statement pertaining to the field of the art to which the invention pertains, because if described overly broadly, the scope can be interpreted to include more art than is actually applicable, thereby opening the patent application to obviousness rejections.  If the field of the invention is described unduly narrowly, then the associated claims may be interpreted too narrowly.

Additionally, I prefer to not describe any related art in the Background section, but instead only refer to any related references in the Information Disclosure Statement (IDS).  It seems, again, at least in the US, that describing any related art can get the applicant into trouble.  While I will sometimes list references, I recognize the risk of describing the contents of a reference in that the description may misrepresent the scope of the reference, potentially leading to accusations of intentionally misleading the examiner.  Therefore, I often describe the prior art in general terms, without explicitly delineating related art references.

Of course there are situations in which I will provide more information in the Background section if I believe it is warranted.

It is my understanding that in some countries it is necessary to include prior art references in the Background section in response to an examiner request, and this can still be done in a revised Background section that was originally relatively short.

I believe it is common convention nowadays amongst patent practitioners to minimize the content of the Background section in US patent applications.  What are the readers’ experiences and opinions?  Please provide your feedback in the Comments section.

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Patently Confused

Because I work as both a patent practitioner and a software engineer, I subscribe to several email “newsletters” and RSS feeds pertaining to patent news and to general technology.  Over the past few years I have read with some amusement the various news stories pertaining to the purported lunacy of patent protection (particularly so-called “software patents”), providing specific examples.  I would be the first to acknowledge that there are indeed some crazy issued patents out there — one great place to find these is at FreePatentsOnline (link).  Occasionally Gene Quinn, a patent attorney and blogger, writes about examples of humorous patents, such as these here.  Note that none of those listed by Gene in the aforementioned post includes software.

Anyway, the problem with many of the posts by bloggers without a solid knowledge of the patent process is that these posts often include agitating titles that assumedly stir up those with anti-patent bents, but without just cause.  The first and foremost mistake made in these articles is to state that someone has obtained a patent on something seemingly ludicrous, when in fact someone has only applied for a patent, but no patent has yet been granted.  As readers of this article are likely aware, one can file a patent application on anything, whether or not the subject matter is patentable — thus the examination process, wherein a patent examiner skilled in the related art examines patent applications to determine patentability.  For the patent examiner to grant patent protection to an invention, the invention in the associated patent application should, among other things, be directed to patentable subject matter, have utility, be novel, and not be obvious to one skilled in the art.

Another common mistake is to read solely an issued patent’s title and/or abstract to try to glean the scope of the patent’s protection.  Claims define the breadth of the patent’s scope, and can frankly often be difficult to understand by their very nature, usually including esoteric language that takes some effort to fully comprehend.

A less common error is to confuse a patent with a trademark, another form of intellectual property protection.  The genesis of this post was an article I found on Slashdot proclaiming “Town Gets Patent On Being the Center of Europe”.  Of course as soon as I saw that headline, I suspected something was amiss — i.e., how would that be patentable subject matter?!  Apparently the source of Slashdot’s post was a Techdirt post, which does not include such an alarming title: “Patenting The Geophysical Center Of Europe?”.  It would appear that the Techdirt author also harbored some doubts about the legitimacy of this odd event.  I  doubt too many of Slashdot’s readers made it this far (unfortunately), but I was happy to find this retort and adequate analysis by Michael Fötsch: “Patenting The Geophysical Center Of Europe?”.  Mike did his research, and discovered, of course, that the so-called “patent” was actually a trademark for the phrase “Center of Europe”.  As Mike duly notes:

So, what do we learn from this? Not much that we didn’t already know, I’m afraid:

  • Wikipedia contains a lot of dubious information.
  • Twitter is a good place to spread dubious information of all sorts.
  • Politic[i]ans will happily repeat anything they find on Wikipedia.
  • Techdirt isn’t afraid to do the same. But when they do, they add a question mark to the headline to cover their bases. 😉

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Patent Agent Limitations

In general, a registered US Patent Agent (not an attorney) can provide patent services on behalf of a client, where these services pertain to the preparation and prosecution of patent documents with the USPTO.  There are several activities that an agent cannot legally perform, and there are others that most agents are not qualified to do. Some of these activities outside the scope of a typical patent agent are listed below for reference (this list is not meant to be exhaustive).

  • Advising on:
    • freedom to operate/commercialize
    • salability
    • market potential
    • licensing
    • suing
    • infringement
  • Marketing
  • Litigating

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