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2012 - Patent Research 101
 

2012 - Patent Research 101

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Take the plunge into the world of intellectual property. Find out how to do patentability searches, litigation research, and state-of-the-art-searches.

Take the plunge into the world of intellectual property. Find out how to do patentability searches, litigation research, and state-of-the-art-searches.

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    2012 - Patent Research 101 2012 - Patent Research 101 Presentation Transcript

    • 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 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
    • 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 theirdenial
    • 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 orpublished applicationsNon-patent literature (NPL) - literally anything andeverything thats not a patent
    • Examples of NPL
    • 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
    • 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 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
    • Patents DissectedBibliographic 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 CodesChallenges• 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 PropertyOrganization (WIPO) StandardsWIPO creates standards that control the format of bibliographic data on patent documents. – Most patent authorities follow these standardsTwo-digit "INID" codes in parentheses appearnext 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 DocsThe WIPO 2-digit codes can help you make sense of non-English documents.On the next two slides, youll see: - A US patent document with INID codes - A Japanese (JP) patent doc with INID codesBoth 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 ClassificationsSpecific 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 from Granted US Patent US 7,541,107 B2Example 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 inventionThese citations are published on the patent face• Citations to other related patents• Citations to related “non-patent literature”
    • 111111111111111 1
    • Patent and Non-Patent Citations Example 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• 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 claimsClaim 1:A tablet computer comprising… acounterbalance armature attached to thekeyboard component that extends from thekeyboard component to oppose a moment ofinertia 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 DataA publication date on a published application isthe date of availability to the public.A publication date on a granted patent indicatesthe 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 DataA "filing date" or "application date" is when the paperwork was filed at the patent office. -In the US its 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.
    • 1111111111111111
    • Application DataExample from Granted US Patent US 7,541,107 B2 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 DataExample from Granted US Patent US 7,541,107 B2 1111111111111111
    • Utility of Application DataWhy 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 dataThe application data shows a relationshipbetween the documents. – It is now easy for an electronic database to link the two.
    • The Concept of "Priority”We have learned: – Applications dont 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 FamilyPatent familiesinclude relatedpatents from allover the worldGermany,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 boxrepresents apublished 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 isEssentialTakeaway:• 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 SearchUse the Smart Search box to enter your number
    • Espacenet Family SearchFind your patent & click “Inpadoc patent family”
    • Espacenet Family SearchResult: list of Inpadoc family members
    • Finding the Patent PDFFind your patent & click “Original Document”
    • Finding the Patent PDF
    • 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
    • Researching Patents Search Tools Search StrategiesPutting 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 EASTPros: best tool for quickly viewing a large number of images, allows someclassification searchingCons: only available at the US PTO, can’t handle sets of large results likecommercial databases, main focus is US material, US OCR quality is low
    • Search Tools: NPL CommercialResources
    • Search Tools: Defensive DisclosuresSometimes companies will have an idea they don’t thinkis commercially viable so they may decide not to pursue apatentTo prevent another company obtaining a patent on thesame idea they publish a document that describes theiridea 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 SourceResources
    • Search Tools: Scirus.com AdvancedSearch Page
    • Search Tools: Scirus.com Search Results
    • Search Tools: Scirus.com Search Results
    • Researching Patents Search Tools Search StrategiesPutting 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: KeywordSearching• Truncation• Proximity/Adjacency• Controlled vs. Uncontrolled• Field Limitation• Search terms in Specification vs Claims vs NPL
    • Search Strategies: ClassificationSearchingUS Classification System (retiring soon)International Patent Classification (IPCs) system – Strength-most widely used – Weakness-inconsistently appliedEuropean Classification System (ECLA) - very granular classifications (retiringsoon)Cooperative Patent Classification (CPCs) - debuting next year, replacing ECLAand US systemsDerwent Manual Codes - commercial classification system with high degreeof granularity for most subjects
    • Search Strategies: Classification SearchingCodes can be used as synonyms for concepts – drum OR G10D13/02Can be combined with keywords to restrictresults to a subject area – (shell OR body) AND G10D13/02
    • Search Strategies: InventorSearchingInventor Searching = searching on the inventors’name – author:(jobs, s* or jobs s*)Assignee Searching = searching on the name ofcurrent or past assignees – assignee:(Apple*)
    • Search Strategies: InventorSearching TipsIf Assignee is academic institution do a detailedinventor search in scholarly sourcesIf Assignee and inventor are the same do a detailedsearch in commercial news sources and open sourcetools like Google and YouTubeIf Assignee is a well known company do a fieldlimitation search and a free text search on their namein commercial news sources and patents
    • Search Strategies: Foreign SearchReportsReport issued by a foreign patent authority which may citeart impacting patentability of the applicationCites specific documents used for denying a patent or forbackground informationMay lead directly to prior art or to documents for citationsearchingSources: EPOline, Espacenet, IpSum, AIPN, kIPO
    • Search Strategies: Semantic SearchingThe 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 additionalsynonyms or classifications, can also provide a startingpoint for citation searchingCon: This is very much hit or miss, can lead to frustratingresultsSources: Ip.com More Like This, LexisNexis Total Patent,Proquest Dialog, Related Content links
    • Search Strategies: Semantic Search
    • Search Strategies: Semantic Search
    • Search Strategies: CitationSearchingIf 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 Tools Search StrategiesPutting the Pieces together
    • Putting the Pieces TogetherUS 20120017746Title: Tone Control Device for Percussion InstrumentsFiling Date: July 26, 2011Inventor: Chad PatrickAssignee: none listed
    • Putting the Pieces Together
    • Putting the Pieces TogetherSearch 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 tambourinesStrategy: 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 TogetherUS 20120017746Title: Tone Control Device for Percussion InstrumentsFiling Date: July 26, 2011Inventor: Chad PatrickAssignee: none listed
    • Putting the Pieces Together
    • Putting the Pieces Together
    • Putting the Pieces Together
    • 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
    • Machine Translations
    • 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 cant 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, WIPOs Patentscope• Commercial systems load pre-translated collections o Can be searched with English keywords• Questels 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
    • 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
    • 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
    • Questions
    • For More Informationhttp://www.lexisnexis.com/community/patentlaw/
    • For More Informationhttp://www.intellogist.com/wiki/Main_Page
    • For More Information http://www.piug.org/
    • For More Informationhttp://www.tms.org/pubs/journals/JOM/matters/matters-9609.html
    • For More Information http://www.governmentinfopro.com/https://www.facebook.com/#!/LexisNexisforGovernment