2012 - Patent Research 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 patent
Discuss roles for librarians in patent research
Explain parts of a patent
Explore researching techniques for patents
Discuss machine translations
Determine 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

Two major reasons to deny a patent
102b “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

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

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

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)

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 Classifications

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”

Patent and Non-Patent Citations

Abstract and Representative Img.

Patent Sections
• Title
• Abstract
• Drawings
– Drawing pages appear directly after the first page
• Description
o Background of Invention
o Drawing Descriptions
o Examples
o 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 claims
Claim 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…

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.

Application Data

1111111111111111

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 Data

1111111111111111

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.

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…

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

Espacenet Family Search
Use the Smart Search box to enter your number

Find your patent & click “Inpadoc patent family”

Result: list of Inpadoc family members

Finding the Patent PDF
Find your patent & click “Original Document”

Researching Patents
Search Tools
Search Strategies
Putting the Pieces together

Search Tools: Patent Literature
Commercial Resources

Search Tools: Patent Literature
Noncommercial 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 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

Credo Reference Tool

OneLook Reverse Dictionary

Free 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: 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

Putting the Pieces Together
US 20120017746
Title: Tone Control Device for Percussion
Instruments

Filing Date: July 26, 2011

Inventor: Chad Patrick
Assignee: none listed


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)


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

Challenges
• If you find a non-English patent, you may be asked
to find a machine translation
o English family members are not always present
o Hand translations are expensive; MTs are a good first step
• Machine translation technology is still evolving
o General translation engines can't handle sci/tech
vocabulary well
o 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 languages
o EPO: English, French and German
o WIPO: 8 official languages, including both latin and non-
latin character sets

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 2011
o 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

For More Information

http://www.lexisnexis.com/community/patentlaw/


http://www.intellogist.com/wiki/Main_Page


http://www.piug.org/


http://www.tms.org/pubs/journals/JOM/matters/matters-9609.html


http://www.governmentinfopro.com/

https://www.facebook.com/#!/LexisNexisforGovernment

2012 - Patent Research 101

Recomendados

Recomendados

Mais conteúdo relacionado

Mais procurados

Mais procurados (20)

Destaque

Destaque (6)

Semelhante a 2012 - Patent Research 101

Semelhante a 2012 - Patent Research 101 (20)

Mais de SLA Government Information Division

Mais de SLA Government Information Division (9)

Último

Último (20)

2012 - Patent Research 101