2012 - patent research 101

Patent Researching 101

Presenters

• Chris Vestal– Chris Vestal is a Government Consultant with LexisNexis in the Washington DC

area. Before he joined LexisNexis Chris worked as a contractor at the United States Patent and Trademark office where he conducted nearly 700 prior art searches for patent examiners. Chris is the current DC/SLA Communications Secretary. Chris can be reached at Chris.Vestal@lexisnexis.com

• Kristin Whitman– Kristin Whitman is a reference librarian with Landon IP, a private patent research

firm, and was one of the founding members of Intellogist (www.Intellogist.com), a free patent searching resource and community. She now serves as a librarian on Landon IP’s internal Reference Desk, promoting knowledge capture and knowledge sharing within the organization. Kristin can be reached at Kwhitman@landon-ip.com

Road Map

Defining a patentDiscuss roles for librarians in patent researchExplain parts of a patentExplore researching techniques for patentsDiscuss machine translationsDetermine the status of a patent

Defining a Patent

What’s a Patent?What’s the Patent Process?

Why Deny a Patent?What is Prior Art?

What is a patent?

A grant made by a government that confers upon the creator of an invention the sole right to make, use, and sell that invention for a certain amount of time (in the US 20 years from the date the application is filed)

What’s the Patent Process?

• Adjudicated by Patent Examiners• Time intensive, complex process• Reviewed at number of levels (individual

examiners, the US PTO, court system)• Typically includes several office actions from

patent examiner and several amendments from applicants

Patent Process

Two major reasons to deny a patent102b “Bullseye”

Invention was already patented or described in another publicly available document more than one year prior to US application date.

103a “Duh it’s obvious”Subject matter as a whole would be obvious to a person having ordinary skill in the art.

In both cases examiners rely on "prior art" to justify their denial

What is Prior Art?

Any information which is used to describe public, technical knowledge prior to the invention by applicant or more than one year prior to their application date.

Two distinct types:Patent literature - previously granted patents or published applications

Non-patent literature (NPL) - literally anything and everything that's not a patent

Examples of NPL

Road Map

Defining a patentDiscuss roles for librarians in patent researchExplain parts of a patentExplore researching techniques for patentsDiscuss machine translationsDetermine the status of a patent

Opportunities for librarians

• Competitive intelligence• Commercially viable technology• Locating partners for R/D• Generating profit for your organization• Providing legal protection to your organization• Safeguarding your organization’s intellectual

property

Road Map

Defining a patentDiscuss roles for librarians in patent researchExplain parts of a patentExplore researching techniques for patentsDiscuss machine translationsDetermine the status of a patent

Patents Dissected

Bibliographic Data and Textual Fields

Topics

• Patent Number Basics• Bibliographic Standards• Types of Data On the Patent Face• Numbers and Dates In-Depth• Patent Families• Retrieving Patent Information from the Web

Patent Numbers: Country Codes

• Every country has their own patent system.• Every patent number begins with a two-letter

“country code.”• The country code indicates what country or

regional authority issued the document.– Examples:– US – United States– JP - Japan– FR – France

Country Codes

• Sometimes the country codes derive from the native language name of the country, e.g. “Deutschland” for Germany. – Examples:– DE – Germany– GB – UK (Great Britain)– CH – Switzerland– HR - Croatia

Publication Numbers

• Patents are identified by “publication numbers”• Challenges:

– Each country has a different numbering format– Applications and granted patents also have different

numbering (in most countries).• Examples:

– US 7,541,107 (B2)– US 2005/031930 (A1)– EP 1296389 (A2)– JP 2003100317 (A)

Publication Numbers

• Most database systems make you remove the punctuation, or the search won’t execute

– A granted patent is written US 7,721,889 (B2)– Search systems want US7721889

Kind Codes

• Every patent publication number is followed by a one or two character “kind code.”– US 7,721,889 B2

• A kind code can be a single letter, or a letter followed by a number, e.g. “A,” “A1” “B2”

• The kind codes indicate the publication stage, where it is in the patenting process.– Published patent applications aren’t deleted when

granted patents issue! They remain in the db.

Kind Codes

• The beginning letter is the most important– If it is followed by a number, that usually indicates

some secondary information• The typical meanings of kind code letters:

– A – first published (usually published apps)– B or C – granted patents– U – utility models (short-term patents)– S – design patents

Kind Codes

Challenges• The meaning of kind code differs by country

– Up until 2001, US granted patents had kind code “A”

• It can also differ based on year of issuance– After 2001, US grants now have B kind codes

Topics

• Patent Number Basics• Bibliographic Standards• Types of Data On the Patent Face• Numbers and Dates In-Depth• Patent Families• Retrieving Patent Information from the Web

World Intellectual Property Organization (WIPO) Standards

WIPO creates standards that control the format of bibliographic data on patent documents.– Most patent authorities follow these standards

Two-digit "INID" codes in parentheses appear next to each data element on a patent face.

– e.g (22) denotes "application date"

See Further: Handbook on Industrial Property Information and Documentation, WIPO ST.9 www.wipo.int/standards/en/pdf/03-09-01.pdf

WIPO Codes and Non-US Docs

The WIPO 2-digit codes can help you make sense of non-English documents.

On the next two slides, you'll see:- A US patent document with INID codes- A Japanese (JP) patent doc with INID codes

Both have application date fields labeled (22)

Topics

• Patent Number Basics• Bibliographic Standards• Types of Data On the Patent Face• Numbers and Dates In-Depth• Patent Families• Retrieving Patent Information from the Web

Inventor vs Assignee/Applicant

• Inventor - individual or group of individuals who created the invention.– Can be multiple inventors– Never changes

• Assignee - individual or corporation. Legal owner who has the right to assert the patent.– Changes when the patent changes hands– Change in ownership not reflected on the patent face!

Patent is not re-published to reflect change.– Outside of the US, the assignee is called the "applicant."

Names (and Addresses)Example from Granted US Patent US 7,541,107 B2

Patent Classifications

Specific classification systems for patents• National Classifications

– The US, Europe and Japan all have their own system• US classification system – USPC• European classification system – ECLA• Japanese classification systems – F-Index and F-terms

• International Classifications (IPCs)• All major authorities are required to use International

Patent Classifications, also known as IPCs

Patent ClassificationsExample from Granted US Patent US 7,541,107 B2

Example below includes IPC and US classes

Citations (“References Cited”)

Patent applicants are required to disclose any known material which might relate to the patentability of their invention

These citations are published on the patent face • Citations to other related patents• Citations to related “non-patent literature”

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Patent and Non-Patent CitationsExample from Granted US Patent US 7,541,107 B2

Abstract and Representative Img.Example from Granted US Patent US 7,541,107 B2

Patent Sections

• Title• Abstract• Drawings

– Drawing pages appear directly after the first page

• Descriptiono Background of Inventiono Drawing Descriptionso Exampleso Note: the description is sometimes called the patent

“specification.”

Patent Sections: Claims

• Claims– The legally enforceable part of a patent.

• When reading claims, remember:– Language in claims has specific legal meaning– Only an attorney can correctly interpret claims.

Misunderstandings about Patents

• Published Application US 2009/0244009 A1• Title: TABLET COMPUTER• Abstract: A tablet computer is composed of a

tablet component and a keyboard component. The tablet component houses all the essential hardware…

• This person really thinks they can patent a tablet computer??

Misunderstandings about Patents

• Read the claimsClaim 1:

A tablet computer comprising… a counterbalance armature attached to the keyboard component that extends from the keyboard component to oppose a moment of inertia of the tablet computer…

Topics

• Patent Number Basics• Bibliographic Standards• Types of Data On the Patent Face• Numbers and Dates In-Depth• Patent Families• Retrieving Patent Information from the Web

Numbers and Dates

• Publication Number and Date• Filing or Application Number and Date• Continuity Information:

• “Related US application data” • Priority Number and Date

Publication Data

A publication date on a published application is the date of availability to the public.

A publication date on a granted patent indicates the date that the patent was issued.

- On the face of the granted patent, it will be called "date of patent."- In an electronic database, it will be called a "publication date"

Publication Date on Granted Patent

• “Date of Patent” is called “publication date” in electronic databases

Filing/Application Data

A "filing date" or "application date" is when the paperwork was filed at the patent office.-In the US it's called a "filing date"-In other sources it may be "application date"

An application number is an ID number, assigned

at the time of filing, that identifies the (unpublished) application.

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Application DataExample from Granted US Patent US 7,541,107 B2

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Related US Application Data:Explanation of “Continuations”

• In the US, patent applications can be split into branches. Each action creates a new application.

• Continuation – Applicant wants to re-draft the claims of their

original application (but no new inventive material)• Continuation-in-part

– Applicant has new improvements to the invention • Divisional

– Examiner splits the application up because it contains multiple inventions

Related US Application DataExample from Granted US Patent US 7,541,107 B2

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Utility of Application Data

Why do we care about application data?• Related published apps vs. their grants will have:

– Two different publication numbers and dates• (because they are two different documents)

– The same application data

The application data shows a relationship between the documents.

– It is now easy for an electronic database to link the two.

The Concept of "Priority”

We have learned:– Applications don't always go straight to grant– Inventions can be split into multiple different

applications, and multiple patents are granted• These patents will all stem from a single initial

application. • This application data is known as the

"priority.”• This is a simple explanation – there is more complexity!

The Importance of "Priority“: International Filings

• Applicants can file many other patent applications around the world

• The concept of priority binds international patents together via application data– Again, the “priority” is the first application in the

chain• Electronic databases can use priority data to

link related international patents together.

Topics

• Patent Number Basics• Bibliographic Standards• Types of Data On the Patent Face• Numbers and Dates In-Depth• Patent Families• Retrieving Patent Information from the Web

Review

• Each nation has its own patenting system.

• Each national patent is only legally enforceable in the country of issuance.

• When you find a US patent, it is likely that there are related patents in other countries.

Example of a Patent Family

Patent families include related patents from all over the world

Germany, Bulgaria, Italy, France, Poland, Hungary, Austria, Cuba, Mongolia…

Patent Family Types

Simple Patent Families

• Some family types are small and exclusive, and all documents are very closely related

• Simple families mean all documents must share exactly the same priority data

• Branches that have separate priorities (e.g. from continuations-in-part) will fall off

Each blue box represents a published document

Inpadoc/Extended Families

• Some patent families are broad and inclusive • These families will contain "branches" off of the

original application • This approach brings in distantly related inventive

material • The common broad family type is an called

"Inpadoc" or "extended" family– each document must share a priority with at least

one other doc in the family

Retrieving Patent Families is Essential

Takeaway:• If someone asks you to retrieve a patent, you

should research and provide patent family data.

Recommended Sources

• There are many examples of small family files, many specific to certain for-pay search products.

• Inpadoc extended family data is widely available in free products– Espacenet, a free search service from the

European Patent Office, is one major source– http://worldwide.espacenet.com

EPO Free Patent Search Engine

Espacenet Family Search

Use the Smart Search box to enter your number

Espacenet Family Search

Find your patent & click “Inpadoc patent family”

Espacenet Family Search

Result: list of Inpadoc family members

Finding the Patent PDF

Find your patent & click “Original Document”

Finding the Patent PDF

Road Map

Defining a patentDiscuss roles for librarians in patent researchExplain parts of a patentExplore researching techniques for patentsDiscuss machine translationsDetermine the status of a patent

Researching Patents

Search ToolsSearch Strategies

Putting the Pieces together

Search Tools: Patent LiteratureCommercial Resources

Search Tools: Patent LiteratureNoncommercial Resources

Search Tools: EAST

Examiner’s Automated Search Tool• The major database US Patent Examiners use• Searches US Pre-grant Publications, US OCR (1920-1979 ), US Patents,

and IBM TDB in full text• Searches Derwent, JPO, and EPO as abstracts• Assesses data stored on multiple servers within the US PTO• A member of the public can register with the US PTO and physically come

to its public search room to use EAST

Pros: best tool for quickly viewing a large number of images, allows some classification searching

Cons: only available at the US PTO, can’t handle sets of large results like commercial databases, main focus is US material, US OCR quality is low

Search Tools: NPL Commercial Resources

Search Tools: Defensive Disclosures

Sometimes companies will have an idea they don’t think is commercially viable so they may decide not to pursue a patent

To prevent another company obtaining a patent on the same idea they publish a document that describes their idea in detail. This is a defensive disclosure.

• IP.com is a major source of defensive disclosures• IBM is one of the biggest publishers of defensive

disclosures

Search Tools: Defensive Disclosures

Search Tools: NPL Open Source Resources

Search Tools: Scirus.com Advanced Search Page

Search Tools: Scirus.com Search Results

Search Tools: Scirus.com Search Results

Researching Patents

Search ToolsSearch Strategies

Putting the Pieces together

Search Strategies: Finding Synonyms

• Credo reference concept map – great commercial source

• Ieee Xplore’s Abstract Plus Indexing – requires subscription

• OneLook reverse dictionary – Free• Free online Dictionary – Free• Wikipedia – use with caution• Mining the Specification• Mining the classification codes

Search Strategies: Finding SynonymsCredo Reference Tool

Search Strategies: Finding SynonymsOneLook Reverse Dictionary

Search Strategies: Finding SynonymsFree Online Dictionary

Search Strategies: Keyword Searching

• Truncation• Proximity/Adjacency• Controlled vs. Uncontrolled• Field Limitation• Search terms in Specification vs Claims vs NPL

Search Strategies: Classification Searching

US Classification System (retiring soon)

International Patent Classification (IPCs) system– Strength-most widely used– Weakness-inconsistently applied

European Classification System (ECLA) - very granular classifications (retiring soon)

Cooperative Patent Classification (CPCs) - debuting next year, replacing ECLA and US systems

Derwent Manual Codes - commercial classification system with high degree of granularity for most subjects

Search Strategies: Classification Searching

Codes can be used as synonyms for concepts– drum OR G10D13/02

Can be combined with keywords to restrict results to a subject area

– (shell OR body) AND G10D13/02

Search Strategies: Inventor Searching

Inventor Searching = searching on the inventors’ name

– author:(jobs, s* or jobs s*)

Assignee Searching = searching on the name of current or past assignees

– assignee:(Apple*)

Search Strategies: Inventor Searching Tips

If Assignee is academic institution do a detailed inventor search in scholarly sources

If Assignee and inventor are the same do a detailed search in commercial news sources and open source tools like Google and YouTube

If Assignee is a well known company do a field limitation search and a free text search on their name in commercial news sources and patents

Search Strategies: Foreign Search Reports

Report issued by a foreign patent authority which may cite art impacting patentability of the application

Cites specific documents used for denying a patent or for background information

May lead directly to prior art or to documents for citation searching

Sources: EPOline, Espacenet, IpSum, AIPN, kIPO

Search Strategies: Semantic Searching

The Siri of patent research! Software tools parse free text, indexing, or classifications to provide you with “similar” material to what you already have.

Pro: Fast and not labor intensive, can identify additional synonyms or classifications, can also provide a starting point for citation searching

Con: This is very much hit or miss, can lead to frustrating results

Sources: Ip.com More Like This, LexisNexis Total Patent, Proquest Dialog, Related Content links

Search Strategies: Semantic Search

Search Strategies: Semantic Search

Search Strategies: Citation Searching

If there’s a document that is close to what you’re looking for and it has an older publication date try forward citing it to see if you can get exactly what you’re looking for:– Using the MAP command in Dialog File 342– Espacenet citing documents’ link– Thomson Innovation - hyperlinked citing sections and

citation map– IEEEXplore’s hyperlinked references and citing documents

section on Abstract Plus

Search Strategies: Citation Searching

Researching Patents

Search ToolsSearch Strategies

Putting the Pieces together

Putting the Pieces Together

US 20120017746Title: Tone Control Device for Percussion

Instruments

Filing Date: July 26, 2011

Inventor: Chad PatrickAssignee: none listed

Putting the Pieces Together

Putting the Pieces Together

Search terms:(drum or drums or drumshell or drum shell or

drumhead or drum head)

(dampener or dampeners or muffler or muffles or muffling or muffled or dampened or dampening or dampens)

(bag or bags or beanbag or beanbags or sac)

Putting the Pieces Together

IPC: G10D13/02 - drums or tambourines

Strategy: use as a search term in lieu of drum terms

(dampener or dampeners or muffler or muffles or muffling or muffled or dampened or dampening or dampens) AND G10D13/02

Putting the Pieces Together

US 20120017746Title: Tone Control Device for Percussion

Instruments

Filing Date: July 26, 2011

Inventor: Chad PatrickAssignee: none listed

Putting the Pieces Together

Putting the Pieces Together

Putting the Pieces Together

Road Map

Defining a patentDiscuss roles for librarians in patent researchExplain parts of a patentExplore researching techniques for patentsDiscuss machine translationsDetermine the status of a patent

Machine Translations

Challenges

• If you find a non-English patent, you may be asked to find a machine translationo English family members are not always presento Hand translations are expensive; MTs are a good first step

• Machine translation technology is still evolvingo General translation engines can't handle sci/tech

vocabulary wello Certain language pairs are less developed (for example,

Finnish to English)

Tools/Sources

• Some national patent offices provide English MTs - Japan, Korea, WIPO's Patentscope

• Commercial systems load pre-translated collections o Can be searched with English keywords

• Questel's Orbit.com and LexisNexis TotalPatent both contain over 20 full text pre-translated collections

• Regional authorities have multiple official languageso EPO: English, French and Germano WIPO: 8 official languages, including both latin and non-

latin character sets

Road Map

Defining a patentDiscuss roles for librarians in patent researchExplain parts of a patentExplore researching techniques for patentsDiscuss machine translationsDetermine the status of a patent

Post-Grant Events

• Maintenance fee payments due – is the patent expired due to non-payment?

• http://portal.uspto.gov/external/portal/pair/• Legal status on Espacenet

• Re-assignments – who really owns the patent?• http://assignments.uspto.gov/assignments/?db=pat

• Litigation – who is getting sued?– Search federal district court dockets, not patent

offices!• PACER http://www.pacer.gov• CourtLink and Westlaw

America Invents Act

• This Act passed in late 2011o System changed from "first-to-invent" to "first-to-file."

Inventors granted one-year grace period from public disclosure to filing

o Curtailment of "patent trolls," those who litigate using patents they have purchased from others A "troll," or "non-practicing entity," owns IP but does not make

any product related to that IP The law restricts new patent suits to be filed against one

company at a time, eliminating the shotgun approach This makes it more costly to file litigation

Now you know ...

• What a patent is• The opportunities that exist for you in patent

research• The different sections of a patent• How to search for patents and prior art• The scoop on machine translations• How to find the status of a patent

Questions

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