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

1. Global Patent Mining :
Tools & Strategies
2016
©Jon Cavicchi
Professor of Legal Research

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. 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. From “shoes” to databases”

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. 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. • Aureka
• Delphion
• Innovation
• MicroPatent
• Web of Science
• Westlaw

8. Keep on top of
changes in law
of prior art…

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. • 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. 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. Much of the world’s patent
literature not searchable

13. Focus on…
•Purpose
•Geographic scope
•Budget
 Money is almost always determinative

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. 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. Intellectual Capital Management

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. 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. • 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. •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. TYPES OF “TRADITIONAL”
PATENT SEARCHES
Pre and post granting applications

22. Patent search more than
searching patents
Patent search involves reference to
publications other than patents

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. Disclosures can be
anywhere
• Patent and non patent literature
Thousands of
of non-legal print &
database sources

25. NPL

26. SIRA STIC NPL
MULTIBASE

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. 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. 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. 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. 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. PATENTABILITY
aka “preliminary” or “novelty” to
determine whether an invention is
patentable

33. INFRINGEMENT
to form a legal opinion about
problems adopting a course of action

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. RIGHT TO USE
to determine whether a patent has
expired & can be copied with
impunity

36. VALIDITY
before taking a license or litigation to
determine whether a patent will
withstand attack

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. CONTINUING
whether there is anything new being
patented in an area of interest

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. ANALYTICS

41. PATENT STATUS
whether any of the 28 +/- post
issuance activities have occurred

42. • adverse decision
• certificate of
correction
• disclaimer
• delayed fee
• error correction
• expiration
• extensions
• suits
• reissue
• reexamination
• withdrawal
• assignment
Post grating actions include...

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. 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. 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. BIG QUESTIONS FOR YOU
So many choices, so little time

47. Who drives the $$ chain?
Is money an object?

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. 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. IN HOUSE OR FARM IT
OUT
law firms and corporate department
have no uniform practices

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. 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

56. WHO TO PERFORM IN
HOUSE SEARCH?
mix and match?

57. 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

58. WHAT IS THE STANDARD
OF CARE?
little guidance from the law

59. 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?

62. The role of the free open
web

63. Web as a source of prior art

64. How do I choose an online
service?
FREE LOW FEE PREMIUM
REMEMBER…YOU CAN USE A SOURCE
TO SEARCH, DOCUMENT DELIVERY OR
BOTH

65. 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®

66. Searching & delivery
examples…
• Patent Fetcher
• Patent Pronto
• Patent Storm
• Getipdl
• FreePatentsOnline
• GetthePatent
• Pat2PDF
• Sumo Brain
• Patsnap
• Patent Lens
• Surf-IP

67. 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

68. NPL
• Patent and non patent literature
Thousands of
of non-legal print &
database sources

69. Tool to Compare Platforms

70. 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.

71. IP
Exchanges
&
IP Supply
Chains

72. Traditional Knowledge Databases

73. Professor Cavicchi’s Iterative
Hybrid Search Method
Intellectual
&
Procedural Steps

74. Otherwise know as…
• Prior art
• Patentability
• Pre-ex
• Initial

76. A good prior art search is an
insurance policy to avoid
validity issue expenses
Professor Tom Field

77. 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.

79. Approaches
• Case by case basis
• Totality of the circumstances
• No model approach
• No step by step approach
• No best practices per se

80. Some online search
comparisons
CAPTURE
&
CULL
2004 WL 64936393

81. 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.

82. The issue of patents for new
discoveries has given a
spring to inventions beyond
my conception.
- Thomas Jefferson

83. 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

84. 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

85. 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

86. 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

87. 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.

88. Non textual searching….
• Challenges
 Figures
 Drawings
 Diagrams
 Structures
 Sequences
 Letterforms &
typography
• Emerging Solutions
 PATSEEK
 ImageSeeker by LTU
 PatMedia

89. 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.

90. 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

91. 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!

92. 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!

93. 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?

94. Patent search is an iterative
process
• …continuous modification of searches as
more information becomes available
• Recheck
• Locate
• Lead
• Tips

95. 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

96. 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

97. 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

98. Specialty Services for Life
Sciences

99. 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

100. 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

101. Disclosures can be
anywhere
• Patent and non patent literature
Hundreds
of non-legal
Electronic databases

102. 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

103. 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…)

104. U.S. Patents on Dialog
Example

110. Step 9: NOW begin to
formulate search strategies
• Terms
• Word variants
• Truncation
• Alternative search terms
• Connectors
 Logical operators
 Proximity connectors

111. Example

112. Formulate terms

113. Truncation…!…?…

114. Don’t forget other terms you
might have…
• Inventors
• Patents numbers
• Classifications
• Other cited references

115. Connectors

116. Logical operators

118. 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)

119. 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

120. 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

121. 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

122. Broaden & narrow search…
Unrestricted full text
Try different field
restrictors:
Class
Spec
Abstract
Title
Mix & match with keywords
Bibliographic file

123. 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

124. Step 11: mine the data
• Cull the results
• Remove duplicates?
• View results
 Bib formats
 Full text
 Document delivery

125. Patent search is an iterative
process
• …continuous modification of searches as
more information becomes available
• Recheck
• Locate
• Lead
• Tips

126. 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?

128. 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.

131. The end is only the
beginning

132. USPTO WEB
• Two complimentary approaches
 7 Step Process
 Search Engine Direct using hybrid approach