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Global Patent Mining :
Tools & Strategies
2016
©Jon Cavicchi
Professor of Legal Research
Learning objectives
• We only have a few weeks so…be articulate
 vocabulary & themes of patent searching
 different ways...
Three phases of patent
searches
Search Analysis
Report
Each search report is customized so
Course does not teach report pr...
From “shoes” to databases”
• Before patent drawings were printed, examiners, while searching patents, had to look at the
original drawings in the dra...
There are as many ways to
do prior art searches as there
are prior art searches…
Each search is unique
Dozens of searching...
• Aureka
• Delphion
• Innovation
• MicroPatent
• Web of Science
• Westlaw
Keep on top of
changes in law
of prior art…
AIA Statutory Framework
Prior Art
35 U.S.C. 102(a)
(Basis for Rejection)
Exceptions 35 U.S.C.
102(b)
(Not Basis for Reject...
• Big databases
 EPO/INPADOC (77)
 World Patent Index (41)
 WIPO PATENTSCOPE
 PCT (122)
 National Authorities
 Lexis...
Growth of EPO & WIPO Collections…a threat?
• Having been in this industry for over 10 years my sense is
that the free serv...
Much of the world’s patent
literature not searchable
Focus on…
•Purpose
•Geographic scope
•Budget
 Money is almost always determinative
Multiplicity of sourcesMultiplicity of sources
Types of sourcesTypes of sources
ApplicationsApplications
Multiple access p...
Small piece of patent informatics…
Finding prior artFinding prior art
patent as datapatent as data
non patent datanon pate...
Intellectual Capital Management
Who uses patent data?
• academics
• policy experts
• government officials
• commercial searchers
• research scientists
• i...
Why do they use patent data?
• Intelligence &
reconnaissance
 watch technology
develop over time
 id new opportunities
...
• how companies can tap the asset values in intellectual
property to achieve board and shareholder objectives, we
pay part...
•Plot competitors' product strategies,
as well as ways to "patent-block" them
•Gain patent-protected entry into
lucrative ...
TYPES OF “TRADITIONAL”
PATENT SEARCHES
Pre and post granting applications
Patent search more than
searching patents
Patent search involves reference to
publications other than patents
Definition of “prior art” is broad…
• “The existing body of technological
information against which an invention is
judged...
Disclosures can be
anywhere
• Patent and non patent literature
Thousands of
of non-legal print &
database sources
NPL
SIRA STIC NPL
MULTIBASE
Patent Act
• Section 101 requires that an invention have
novelty & utility
• Section 102 defines novelty and creates
statu...
Section 102
• Novelty provisions focus on certain events
constituting anticipation
• Statutory bar focuses on events that ...
Disclosure…
• Printed publication accessible to the public
anywhere in the world…
 Manufacturers catalogs
 Product speci...
Jorda to Ciba Geigy Pharma R&D
Five events that trigger patent search
• before filing a patent application
• before enteri...
Patent Searching
Terminology is Messy!
• Lawyers, scientists, business, IP,
international development professionals use
la...
PATENTABILITY
aka “preliminary” or “novelty” to
determine whether an invention is
patentable
INFRINGEMENT
to form a legal opinion about
problems adopting a course of action
FREEDOM TO OPERATE
•a.k.a. “Right to Make Search”, “Clearance Search”,
“Right to Use Search”, “Justification Search”
•Incl...
RIGHT TO USE
to determine whether a patent has
expired & can be copied with
impunity
VALIDITY
before taking a license or litigation to
determine whether a patent will
withstand attack
PATENT LANDSCAPE
STATE OF THE ART
• Patent landscaping uncovers:
 Market opportunities for licensing
 Competitive techno...
CONTINUING
whether there is anything new being
patented in an area of interest
FAMILY/CORRESPONDING
• whether a corresponding patent has been
filed with a filing entity
• to map out the countries where...
ANALYTICS
PATENT STATUS
whether any of the 28 +/- post
issuance activities have occurred
• adverse decision
• certificate of
correction
• disclaimer
• delayed fee
• error correction
• expiration
• extensions
• s...
TYPICAL PATENT DATA PATH
• Source of Patents
 PTO
 sell the same data to anyone
• Publisher or producer
 corrects, inde...
3 TYPES OF PATENT DATABASES
• #1 Bibliographic
 not full text
 citation, dates, class, abstract
• Full Text
 basic or e...
Online services organize data
differently--some models
• Trend is to “menuize” and “templatize”
 Innovation, TotalPatent ...
BIG QUESTIONS FOR YOU
So many choices, so little time
Who drives the $$ chain?
Is money an object?
DO WE DO A SEARCH?
• Patentability Search
• Client won’t pay
• Client approves a very small budget
• “Let the Patent Offic...
Patent document as a commodity?
• A patent is a patent is a patent?
 yes and no
 same basic record
 record indexing & o...
IN HOUSE OR FARM IT
OUT
law firms and corporate department
have no uniform practices
Factors to consider...
• Past practice
• Cost
• Hourly rate
• Control
• Liability & ethics issues
• Purpose of search
• Ty...
Cast of searchers…
• Large Search Firms (Langdon IP &
Cardinal IP)
• Small Search Firms (DEMARCOIP)
• Solo searchers (Step...
WHO TO PERFORM IN
HOUSE SEARCH?
mix and match?
Factors to consider...
• No standard…every office has own approach
• Lawyer…librarian…paralegal…subject
specialist…invento...
WHAT IS THE STANDARD
OF CARE?
little guidance from the law
Some observations...
• No statutory duty
• No negligence or malpractice cases
• Conduct Rule 1.1 Duty of Competence?
• Rul...
The role of the free open
web
Web as a source of prior art
How do I choose an online
service?
FREE LOW FEE PREMIUM
REMEMBER…YOU CAN USE A SOURCE
TO SEARCH, DOCUMENT DELIVERY OR
BOTH
For example...
• Free
 WIPO PatentScope
 PCT
 EPO Espac@net
 ARIPO
 National Offices
• UPSTO
• CHINA
• KOREA
• JAPAN
...
Searching & delivery
examples…
• Patent Fetcher
• Patent Pronto
• Patent Storm
• Getipdl
• FreePatentsOnline
• GetthePaten...
Web is both alternative & complimentary
• Depends on why you are doing search
 some bibliographic only
 some lack covera...
NPL
• Patent and non patent literature
Thousands of
of non-legal print &
database sources
Tool to Compare Platforms
Defensive publications…
• The IP.com Prior Art Database is an excellent solution for
companies who wish to publish their t...
IP
Exchanges
&
IP Supply
Chains
Traditional Knowledge Databases
Professor Cavicchi’s Iterative
Hybrid Search Method
Intellectual
&
Procedural Steps
Otherwise know as…
• Prior art
• Patentability
• Pre-ex
• Initial
A good prior art search is an
insurance policy to avoid
validity issue expenses
Professor Tom Field
Assumption for this class..
You will do the search from your
desktop BUT NOT using the Public
Search Room at the USPTO or ...
Approaches
• Case by case basis
• Totality of the circumstances
• No model approach
• No step by step approach
• No best p...
Some online search
comparisons
CAPTURE
&
CULL
2004 WL 64936393
Recall & precision
• Recall describes the idea of all items which are relevant
(useful) to a query. In the real world, onl...
The issue of patents for new
discoveries has given a
spring to inventions beyond
my conception.
- Thomas Jefferson
Patent searchers’ conundrum…
• Retrieve highly specific and tailored results
with as few marginal, irrelevant hits as
poss...
Problems with patent
searching
• Recall more important than highly tailored
results
• Precision not primary consideration
...
Other difficulties
• KEYWORD OBFUSCATION
• Short, meaningless titles and abstracts
• Patent documents notorious for vaguen...
Subject descriptors
• Patent classification schemes
 Bloated?
 Out of date?
 Patented invention may be in different
tec...
New - CPC
• PTO and European Patent Office team
up on classification system
 The National Law Journal
 October 25, 2010
...
Non textual searching….
• Challenges
 Figures
 Drawings
 Diagrams
 Structures
 Sequences
 Letterforms &
typography
•...
U.S. Patents Riddled With Mistakes,
Survey Finds
• An astounding 98% of approved U.S. patent applications contain
mistakes...
Step 1 :get to know the idea
or invention
• Spectrum from idea to reduction to practice
• Too little information…too much
...
What type of inventions
patentable?
• Device
• Process
• Improvement
• Kit
• Machine
• Manufacture
• Composition of matter...
Step 2: what is the scope of
your search?
• What is the scope of protection you are
looking for?
• Scope will play role in...
Step 3: formulate your initial
list of search approaches
• What data do you have at this point?
• What are potential searc...
Patent search is an iterative
process
• …continuous modification of searches as
more information becomes available
• Reche...
Step 4: formulate initial list of
subject search terms
• List all essential parts or steps
 Think of the parts of the fro...
Step 5: choose database(s)
• Many to choose from
• Each differs somewhat in content and
search capabilities
• Crossfile se...
Step 6: choose which
service(s) to use
Spectrum from free to premium services
• Multiple access points to the same data
• ...
Specialty Services for Life
Sciences
What is the value added?
Content
Coverage
Scope
Enhancements
Accuracy
Error rate
Ease of use
Search sophistication
Integra...
Alternative approaches
“The 1 click that takes 1000 clicks on other services”
• Search and examination relied on operator ...
Disclosures can be
anywhere
• Patent and non patent literature
Hundreds
of non-legal
Electronic databases
Step 7: strategize on which
order you use services
• Know the content on each
• Start with U. S. patents fulltext?
• Want ...
Step 8: approach the service
• Scope out each database you plan to search
• What data is in the database?
• How is the dat...
U.S. Patents on Dialog
Example
Step 9: NOW begin to
formulate search strategies
• Terms
• Word variants
• Truncation
• Alternative search terms
• Connect...
Example
Formulate terms
Truncation…!…?…
Don’t forget other terms you
might have…
• Inventors
• Patents numbers
• Classifications
• Other cited references
Connectors
Logical operators
Proximity connectors
• specify the relative nearness or adjacency of
search terms
• They are used in two-word or multiple-...
Step 10: FINALLY formulate
some searches
• Classification search - controlled approach
• Keywords - uncontrolled approach
...
But why can’t I just plug in
my search terms?
 Full text search may be OK in small records
 FULL TEXT BIG…LONG RECORDS…
...
What if…
• I get no hits
 Try other searches
 Show me the approached/searches you tried
 Move along to next database
• ...
Broaden & narrow search…
Unrestricted full text
Try different field
restrictors:
Class
Spec
Abstract
Title
Mix & match wit...
Why should I have to review 5,000
patents to find the 200 relevant ones?
• Everyone, including searchers, has an instincti...
Step 11: mine the data
• Cull the results
• Remove duplicates?
• View results
 Bib formats
 Full text
 Document delivery
Patent search is an iterative
process
• …continuous modification of searches as
more information becomes available
• Reche...
Step 12: present the data
• Again, no standard
• How much data to collect
 Pay per view - $ - $$ - $$$ - $$$$
 Minimal c...
Developments…
• AIA?
• Common Patent Classification
• Patent offices outsource searches?
• Certified Patent Searchers?
• A...
The end is only the
beginning
USPTO WEB
• Two complimentary approaches
 7 Step Process
 Search Engine Direct using hybrid approach
Introduction to Global Patent Searching & Analysis
Introduction to Global Patent Searching & Analysis
Introduction to Global Patent Searching & Analysis
Introduction to Global Patent Searching & Analysis
Introduction to Global Patent Searching & Analysis
Introduction to Global Patent Searching & Analysis
Introduction to Global Patent Searching & Analysis
Introduction to Global Patent Searching & Analysis
Introduction to Global Patent Searching & Analysis
Introduction to Global Patent Searching & Analysis
Introduction to Global Patent Searching & Analysis
Introduction to Global Patent Searching & Analysis
Introduction to Global Patent Searching & Analysis
Introduction to Global Patent Searching & Analysis
Introduction to Global Patent Searching & Analysis
Introduction to Global Patent Searching & Analysis
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Introduction to Global Patent Searching & Analysis Slide 1 Introduction to Global Patent Searching & Analysis Slide 2 Introduction to Global Patent Searching & Analysis Slide 3 Introduction to Global Patent Searching & Analysis Slide 4 Introduction to Global Patent Searching & Analysis Slide 5 Introduction to Global Patent Searching & Analysis Slide 6 Introduction to Global Patent Searching & Analysis Slide 7 Introduction to Global Patent Searching & Analysis Slide 8 Introduction to Global Patent Searching & Analysis Slide 9 Introduction to Global Patent Searching & Analysis Slide 10 Introduction to Global Patent Searching & Analysis Slide 11 Introduction to Global Patent Searching & Analysis Slide 12 Introduction to Global Patent Searching & Analysis Slide 13 Introduction to Global Patent Searching & Analysis Slide 14 Introduction to Global Patent Searching & Analysis Slide 15 Introduction to Global Patent Searching & Analysis Slide 16 Introduction to Global Patent Searching & 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Introduction to Global Patent Searching & Analysis

  1. 1. Global Patent Mining : Tools & Strategies 2016 ©Jon Cavicchi Professor of Legal Research
  2. 2. Learning objectives • We only have a few weeks so…be articulate  vocabulary & themes of patent searching  different ways patent data is used in legal and business settings  Sources & limitations of U.S., foreign, international and patent family data  Spectrum of no fee to premium sources of said data  Professor Cavicchi’s iterative hybrid patent searching approach transferable to scoping out any platform  Application of approach using the Thomson Innovation, Dialog and free web platforms.
  3. 3. Three phases of patent searches Search Analysis Report Each search report is customized so Course does not teach report production Good search is foundation. Search report walks through sources & approaches
  4. 4. From “shoes” to databases”
  5. 5. • Before patent drawings were printed, examiners, while searching patents, had to look at the original drawings in the draftsman's office in large portfolio cases • There were 777 folio cases of original drawings which were safely removed from the draftsman's office in the fire of 1877. But when the drawings, and especially the entire patents, were printed, they were available for search in the examiners' rooms and soon in the new public search room. The necessary new filing system was provided by shoe cases. • The origin of the term shoe is lost, although every patent examiner knows where his shoes are. Some have attributed the term to Thomas Jefferson, suggesting that he stored his patents in shoe boxes. But we know that the drawings kept in the Patent Office in the preprinting days were of varying sizes and were kept in portfolios from the earliest days. Shoes, as we know them, could only have arisen after all patents were available in small, uniform sizes and could be kept in small, uniform boxes. • A complete inventory of the moveable property in the Patent Office was made in 1870, including numerous portfolio cases, portfolio racks, portfolio drawers, and cases for models, 22,000 volumes of books and 300 spittoons, but no shoes. Augustus Burgdorf, livery stable operator, undertaker and cabinet-maker of Washington, sold portfolios and cases to the Patent Office in 1878. • The first known mention of shoes was on March 28, 1879, when he sold shoe drawers to the Patent Office for $115. What were called shoe drawers would now be called shoes. Perhaps file cabinets suitable for holding bundles of patents while allowing easy access to search through them were already available before they were needed. Perhaps shoe shops of the day kept their supply of ready-made shoes in wood cabinets containing numerous drawers of just the right size to hold patents, and when the Patent Office wanted to order its first drawers, it ordered shoe drawers from Augustus Burgdorf.
  6. 6. There are as many ways to do prior art searches as there are prior art searches… Each search is unique Dozens of searching platforms
  7. 7. • Aureka • Delphion • Innovation • MicroPatent • Web of Science • Westlaw
  8. 8. Keep on top of changes in law of prior art…
  9. 9. AIA Statutory Framework Prior Art 35 U.S.C. 102(a) (Basis for Rejection) Exceptions 35 U.S.C. 102(b) (Not Basis for Rejection) 102(a)(1) Disclosure with Prior Public Availability Date 102(b)(1) (A) Grace Period Disclosure by Inventor or Obtained from Inventor (B) Grace Period Intervening Disclosure by Third Party 102(a)(2) U.S. Patent, Published U.S. Patent Application, and Published PCT 102(b)(2) (A) Disclosure Obtained from Inventor (B) Intervening Disclosure by Third Party Application with Prior Filing Date (C) Commonly Owned Disclosures
  10. 10. • Big databases  EPO/INPADOC (77)  World Patent Index (41)  WIPO PATENTSCOPE  PCT (122)  National Authorities  Lexis Total Patent (100)  ESPACENET v5. - ?  WIPO PATENTSCOPE -? NO WORLD PATENT DATABASENO WORLD PATENT DATABASE
  11. 11. Growth of EPO & WIPO Collections…a threat? • Having been in this industry for over 10 years my sense is that the free services have become an impediment to the growth and development of more robust offerings and analytic capabilities from the private sector.  Peter Vanderheyden, Former Vice President, Global Intellectual Property, LexisNexis
  12. 12. Much of the world’s patent literature not searchable
  13. 13. Focus on… •Purpose •Geographic scope •Budget  Money is almost always determinative
  14. 14. Multiplicity of sourcesMultiplicity of sources Types of sourcesTypes of sources ApplicationsApplications Multiple access points to same dataMultiple access points to same data Who uses patent data sourcesWho uses patent data sources Why use patent data sourcesWhy use patent data sources Factors to choose access pointsFactors to choose access points Search approachSearch approach We will discuss today…
  15. 15. Small piece of patent informatics… Finding prior artFinding prior art patent as datapatent as data non patent datanon patent data Competitor intelligenceCompetitor intelligence Statistical usesStatistical uses Patent citations & innovationPatent citations & innovation Patent mapping & analyticsPatent mapping & analytics Identifying intellectual assetsIdentifying intellectual assets Manipulate & present data in graphicalManipulate & present data in graphical
  16. 16. Intellectual Capital Management
  17. 17. Who uses patent data? • academics • policy experts • government officials • commercial searchers • research scientists • inventors • Engineers • managers • marketing • IP attorneys • patent agents • patents searchers • law firm • corporations • PTO examiners • licensing pros • technology transfer pros
  18. 18. Why do they use patent data? • Intelligence & reconnaissance  watch technology develop over time  id new opportunities  protect IP  save $ before proceeding  who is active • Focus on company or inventor  what are they up to?  licensing opportunities?  monopolies?  block monopolies?
  19. 19. • how companies can tap the asset values in intellectual property to achieve board and shareholder objectives, we pay particular attention to the use of patents to:  Generate new revenues through licensing  Boost earnings per share and total shareholder return  Improve return on investment for R&D and seed continuing innovation  Raise corporate valuations and enhance equity and other financing efforts  Serve as the currency of mergers, acquisitions, and joint ventures “Patent data is the greatest source of competitive intelligence on earth” ~ Rivette
  20. 20. •Plot competitors' product strategies, as well as ways to "patent-block" them •Gain patent-protected entry into lucrative but hotly contested markets •Acquire exclusive rights to emerging market-leading technologies •Increase R&D effectiveness and avoid infringement minefields •Detect possible infringers, as well as likely sources of licensing income
  21. 21. TYPES OF “TRADITIONAL” PATENT SEARCHES Pre and post granting applications
  22. 22. Patent search more than searching patents Patent search involves reference to publications other than patents
  23. 23. Definition of “prior art” is broad… • “The existing body of technological information against which an invention is judged to determine if it is patentable as being a novel and nonobvious invention” • McCarthy’s Desk Encyclopedia of IP, 2d Ed. • Reference to Patent Act and cases.
  24. 24. Disclosures can be anywhere • Patent and non patent literature Thousands of of non-legal print & database sources
  25. 25. NPL
  26. 26. SIRA STIC NPL MULTIBASE
  27. 27. Patent Act • Section 101 requires that an invention have novelty & utility • Section 102 defines novelty and creates statutory bars • Section 103 requires that the invention be a nonobvious development over that prior art
  28. 28. Section 102 • Novelty provisions focus on certain events constituting anticipation • Statutory bar focuses on events that may occur prior to the patent application • Domestic or foreign: prior patent, printed publication, public sale, use, invention by others...
  29. 29. Disclosure… • Printed publication accessible to the public anywhere in the world…  Manufacturers catalogs  Product specification sheets  Conference papers  Articles in journal  Academic theses in libraries  Web content • Anywhere you find evidence of public use, advertising, sales…
  30. 30. Jorda to Ciba Geigy Pharma R&D Five events that trigger patent search • before filing a patent application • before entering a new field of research • before commencing manufacture of a new product or use of a new process or improved products or processes • before taking a license under someone else’s patent • before patent litigation
  31. 31. Patent Searching Terminology is Messy! • Lawyers, scientists, business, IP, international development professionals use labels without a common reference vocabulary • Leads to “symantic disconnect” • Get as much detail as to the purpose and nature of the search, analysis, report…
  32. 32. PATENTABILITY aka “preliminary” or “novelty” to determine whether an invention is patentable
  33. 33. INFRINGEMENT to form a legal opinion about problems adopting a course of action
  34. 34. FREEDOM TO OPERATE •a.k.a. “Right to Make Search”, “Clearance Search”, “Right to Use Search”, “Justification Search” •Includes an infringement search in addition to expired patents that may provide a safe haven for a specific product, process, or service…address both infringement and patentability concerns.
  35. 35. RIGHT TO USE to determine whether a patent has expired & can be copied with impunity
  36. 36. VALIDITY before taking a license or litigation to determine whether a patent will withstand attack
  37. 37. PATENT LANDSCAPE STATE OF THE ART • Patent landscaping uncovers:  Market opportunities for licensing  Competitive technology trends  Gaps in corporate patent portfolios  Opportunities for entry into new markets  Targets/risks for patent infringement litigation  Opportunities for redirecting R&D efforts
  38. 38. CONTINUING whether there is anything new being patented in an area of interest
  39. 39. FAMILY/CORRESPONDING • whether a corresponding patent has been filed with a filing entity • to map out the countries where the competitors' patents or utility models form a potential business hindrance. • to reduce the risk of infringement cases with potential claims for damages. • to obtain information about changes in the ownership of a patent or a utility model.
  40. 40. ANALYTICS
  41. 41. PATENT STATUS whether any of the 28 +/- post issuance activities have occurred
  42. 42. • adverse decision • certificate of correction • disclaimer • delayed fee • error correction • expiration • extensions • suits • reissue • reexamination • withdrawal • assignment Post grating actions include...
  43. 43. TYPICAL PATENT DATA PATH • Source of Patents  PTO  sell the same data to anyone • Publisher or producer  corrects, indexes, abstracts, packages data • Vendor  factory outlet  department store  boutique
  44. 44. 3 TYPES OF PATENT DATABASES • #1 Bibliographic  not full text  citation, dates, class, abstract • Full Text  basic or enhanced record  Human OR Machine Translated OR Machine Assisted • Hybrid  full text plus abstract...
  45. 45. Online services organize data differently--some models • Trend is to “menuize” and “templatize”  Innovation, TotalPatent and most others • Lexis  Library, file, documents, segments, word • Westlaw  Topical area, database, documents, fields, term • DIALOG  file, record, (index, suffix, prefix, field), string • QUESTEL/ORBIT  file, record, (field, index, qualifier), string
  46. 46. BIG QUESTIONS FOR YOU So many choices, so little time
  47. 47. Who drives the $$ chain? Is money an object?
  48. 48. DO WE DO A SEARCH? • Patentability Search • Client won’t pay • Client approves a very small budget • “Let the Patent Office do the search” • “Let the inventor do the search” • “We don’t care if the patent is invalid” • Unintended downstream consequences?
  49. 49. Patent document as a commodity? • A patent is a patent is a patent?  yes and no  same basic record  record indexing & output differs  quality issue  time issue  cost issue • Always ask what a producer does to the record…”what is the value added” to your service?
  50. 50. IN HOUSE OR FARM IT OUT law firms and corporate department have no uniform practices
  51. 51. Factors to consider... • Past practice • Cost • Hourly rate • Control • Liability & ethics issues • Purpose of search • Type of search  target searches • Sophistication of in house staff • Trust in manual & electronic searches  missing patents both online & at PTO
  52. 52. Cast of searchers… • Large Search Firms (Langdon IP & Cardinal IP) • Small Search Firms (DEMARCOIP) • Solo searchers (Stephen Key) • Technical Search Firms (NERAC) • Unregulated collection of searchers with varying degrees of technical and legal background
  53. 53. WHO TO PERFORM IN HOUSE SEARCH? mix and match?
  54. 54. Factors to consider... • No standard…every office has own approach • Lawyer…librarian…paralegal…subject specialist…inventor • Depends on purpose of search  novelty & state of art may differ from validity or infringement search • Balance familiarity with subject matter with searching skills • Again--cost is a factor
  55. 55. WHAT IS THE STANDARD OF CARE? little guidance from the law
  56. 56. Some observations... • No statutory duty • No negligence or malpractice cases • Conduct Rule 1.1 Duty of Competence? • Rule 56 Duty of Candor  Bury a citation = hiding from examiner?
  57. 57. The role of the free open web
  58. 58. Web as a source of prior art
  59. 59. How do I choose an online service? FREE LOW FEE PREMIUM REMEMBER…YOU CAN USE A SOURCE TO SEARCH, DOCUMENT DELIVERY OR BOTH
  60. 60. For example... • Free  WIPO PatentScope  PCT  EPO Espac@net  ARIPO  National Offices • UPSTO • CHINA • KOREA • JAPAN • INDIA • Premium  “Flagship” Lexis & Westlaw®  Lexis TotalPatent®  Thomson ~ Innovation®  Thomson ~ Delphion®  Thomson ~ Micropatent®  Thomson ~ Westlaw©  Minesoft®  Pantros IP®  ProQuest ~ Dialog®  QUESTEL ~ ORBIT©  STN®  GenomeQuest®
  61. 61. Searching & delivery examples… • Patent Fetcher • Patent Pronto • Patent Storm • Getipdl • FreePatentsOnline • GetthePatent • Pat2PDF • Sumo Brain • Patsnap • Patent Lens • Surf-IP
  62. 62. Web is both alternative & complimentary • Depends on why you are doing search  some bibliographic only  some lack coverage  some admit missing records  some lack images • May choose as document delivery option only
  63. 63. NPL • Patent and non patent literature Thousands of of non-legal print & database sources
  64. 64. Tool to Compare Platforms
  65. 65. Defensive publications… • The IP.com Prior Art Database is an excellent solution for companies who wish to publish their technical disclosures (defensive publications) in a well-known, library indexed, publicly searchable database specifically dedicated to the promotion and publishing of prior art data.
  66. 66. IP Exchanges & IP Supply Chains
  67. 67. Traditional Knowledge Databases
  68. 68. Professor Cavicchi’s Iterative Hybrid Search Method Intellectual & Procedural Steps
  69. 69. Otherwise know as… • Prior art • Patentability • Pre-ex • Initial
  70. 70. A good prior art search is an insurance policy to avoid validity issue expenses Professor Tom Field
  71. 71. Assumption for this class.. You will do the search from your desktop BUT NOT using the Public Search Room at the USPTO or its tools.
  72. 72. Approaches • Case by case basis • Totality of the circumstances • No model approach • No step by step approach • No best practices per se
  73. 73. Some online search comparisons CAPTURE & CULL 2004 WL 64936393
  74. 74. Recall & precision • Recall describes the idea of all items which are relevant (useful) to a query. In the real world, only a subset of the relevant items are found. • Precision describes the idea of only those items which are relevant to a query. Again, in the real world, many items which are matched by a query are not really relevant to the question, although they might match the vocabulary. • In information retrieval, there's a classic tension between recall and precision. Specifying more recall (trying to find all the relevant items), you often get a lot of junk. If you limit your search trying to find only precisely relevant items, you can miss important items because they don't use quite the same vocabulary.
  75. 75. The issue of patents for new discoveries has given a spring to inventions beyond my conception. - Thomas Jefferson
  76. 76. Patent searchers’ conundrum… • Retrieve highly specific and tailored results with as few marginal, irrelevant hits as possible • Rarely do searchers need to see every related item • Patent searchers hope to find nothing, but by finding nothing they cannot be sure whether or not the job is really finished
  77. 77. Problems with patent searching • Recall more important than highly tailored results • Precision not primary consideration • False drops included as solution occurs in millions of patent and non-patent documents
  78. 78. Other difficulties • KEYWORD OBFUSCATION • Short, meaningless titles and abstracts • Patent documents notorious for vagueness • Language may be abstract - patent attorney is own lexionographer  Frisbee = levitating disk • Vocabulary may not be standardized or even exist  Kevlar = optically anisotrophic aromatic polyamide dopes classed with synthetic resins and not tires or bullet proofing
  79. 79. Subject descriptors • Patent classification schemes  Bloated?  Out of date?  Patented invention may be in different technology from that in which it is eventually applied? • Velcro = classed in stock materials while applications found in medical and amusement devices
  80. 80. New - CPC • PTO and European Patent Office team up on classification system  The National Law Journal  October 25, 2010 • The latest U.S. Patent and Trademark Office innovation is a deal to work with the European Patent Office on a joint patent classification system aligned with global standards.
  81. 81. Non textual searching…. • Challenges  Figures  Drawings  Diagrams  Structures  Sequences  Letterforms & typography • Emerging Solutions  PATSEEK  ImageSeeker by LTU  PatMedia
  82. 82. U.S. Patents Riddled With Mistakes, Survey Finds • An astounding 98% of approved U.S. patent applications contain mistakes ranging from simple spelling errors to omitted claims. • The mistakes were uncovered by Intellevate, the world’s largest patent proofreading organization. More than half of the mistakes it found at its office in India were made by the U.S. Patent and Trademark Office, according to Intellevate chief executive Leon Steinberg. • We find mistakes on everything from leaving out portions of the patent claims to putting in the wrong drawings, to spelling mistakes, Steinberg said. Spelling mistakes like those can have significant consequences for both the inventor and the consumer.
  83. 83. Step 1 :get to know the idea or invention • Spectrum from idea to reduction to practice • Too little information…too much information • Use the inventor or management to explain the invention • What is the inventive step? • Is there other information you need? • Ask about non patent literature in field
  84. 84. What type of inventions patentable? • Device • Process • Improvement • Kit • Machine • Manufacture • Composition of matter or material • Business method • Design • Plant • Software • chemical compositions • mixtures of ingredients as well as new chemical compounds. • Anything under the sun!
  85. 85. Step 2: what is the scope of your search? • What is the scope of protection you are looking for? • Scope will play role in formulation of search terms and choice of databases • Disclosed information is disclosed information!
  86. 86. Step 3: formulate your initial list of search approaches • What data do you have at this point? • What are potential search approaches? • Non-subject access points  Inventors?  Assignee?  Patent number?  Classification?
  87. 87. Patent search is an iterative process • …continuous modification of searches as more information becomes available • Recheck • Locate • Lead • Tips
  88. 88. Step 4: formulate initial list of subject search terms • List all essential parts or steps  Think of the parts of the front page  Descriptive  Function  How it works  How it is structured  Results produced  Steps involved  Problem solved
  89. 89. Step 5: choose database(s) • Many to choose from • Each differs somewhat in content and search capabilities • Crossfile searching can be useful  Ease of search varies depending upon the extent to which the files have been “harmonized” for crossfile searching
  90. 90. Step 6: choose which service(s) to use Spectrum from free to premium services • Multiple access points to the same data • Get to know what value added each service offers  Content  Searchability  Cost  Employer preferences  Data output options / analytics  Time  Familiarity
  91. 91. Specialty Services for Life Sciences
  92. 92. What is the value added? Content Coverage Scope Enhancements Accuracy Error rate Ease of use Search sophistication Integration Output flexibility Customer support Training Pricing options
  93. 93. Alternative approaches “The 1 click that takes 1000 clicks on other services” • Search and examination relied on operator quality and could not be held to an empirical standard. • Heuristics • Latent semantic analysis • Natural language
  94. 94. Disclosures can be anywhere • Patent and non patent literature Hundreds of non-legal Electronic databases
  95. 95. Step 7: strategize on which order you use services • Know the content on each • Start with U. S. patents fulltext? • Want to search one database or many • Begin the data harvesting
  96. 96. Step 8: approach the service • Scope out each database you plan to search • What data is in the database? • How is the data arranged? • What are the searchable parts (fields, segments, indexes…)
  97. 97. U.S. Patents on Dialog Example
  98. 98. Step 9: NOW begin to formulate search strategies • Terms • Word variants • Truncation • Alternative search terms • Connectors  Logical operators  Proximity connectors
  99. 99. Example
  100. 100. Formulate terms
  101. 101. Truncation…!…?…
  102. 102. Don’t forget other terms you might have… • Inventors • Patents numbers • Classifications • Other cited references
  103. 103. Connectors
  104. 104. Logical operators
  105. 105. Proximity connectors • specify the relative nearness or adjacency of search terms • They are used in two-word or multiple-word phrases or phrases that have punctuation or stop words. • Proximity connectors on Dialog include (w), (n), (#w), (#n), and (s)
  106. 106. Step 10: FINALLY formulate some searches • Classification search - controlled approach • Keywords - uncontrolled approach • Hybrid - best of both worlds • Think like a patent examiner • Keep the structure of the document in mind
  107. 107. But why can’t I just plug in my search terms?  Full text search may be OK in small records  FULL TEXT BIG…LONG RECORDS… MASSIVE DATABASES… • Search fields • Use proximity connectors  Title, Abstract searches find most relevant  Do class search and use keywords within the class
  108. 108. What if… • I get no hits  Try other searches  Show me the approached/searches you tried  Move along to next database • I get tons of hits
  109. 109. Broaden & narrow search… Unrestricted full text Try different field restrictors: Class Spec Abstract Title Mix & match with keywords Bibliographic file
  110. 110. Why should I have to review 5,000 patents to find the 200 relevant ones? • Everyone, including searchers, has an instinctive feeling that searching should be more straightforward. Was my capture strategy inefficient? The answer is, "No." Try this. After you have completed a search and have your list of relevant patents, try to rewrite your capture strategy to capture only the relevant patents without capturing thousands more. You cannot. This frustrating exercise will show you just how noisy the capture part is. So culling remains necessary because capture methods are just too noisy. Searchers work within the noise to deliver relevance.  2004 WL 64936393
  111. 111. Step 11: mine the data • Cull the results • Remove duplicates? • View results  Bib formats  Full text  Document delivery
  112. 112. Patent search is an iterative process • …continuous modification of searches as more information becomes available • Recheck • Locate • Lead • Tips
  113. 113. Step 12: present the data • Again, no standard • How much data to collect  Pay per view - $ - $$ - $$$ - $$$$  Minimal citation ~ let lawyer ask for full text • How to manage data • How to present data  Patent searchers don’t provide legal opinions  Do you need pretty pictures?
  114. 114. Developments… • AIA? • Common Patent Classification • Patent offices outsource searches? • Certified Patent Searchers? • Accelerated Patent Examination: applicant provides an appropriate search of the prior art and an improved explanation of the claims and prior art found.
  115. 115. The end is only the beginning
  116. 116. USPTO WEB • Two complimentary approaches  7 Step Process  Search Engine Direct using hybrid approach
  • ElizabethBeaudette

    Nov. 27, 2021
  • cjmeyers

    Oct. 9, 2017

Introduction to global patent searching for UNH School of Law Mining Patents Class

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