Patent Searching

Tools & Techniques

David Hunt, Long Nguyen, Matthew Rodgers, David Hunt, Long Nguyen, Matthew Rodgers

• Publisher: Wiley
• Year: 2012
• ISBN:
  9781118429259
• Edition: 1
• Topic: Diritto
• Subtopic: Diritto sulla proprietà intellettuale

Whether you're a patent examiner, patent attorney, commercial patent searcher, patent liaison, IP librarian, law professor, or competitive intelligence analyst, you'll find Patent Searching: Tools and Techniques to be just the guide you have been waiting for, with a range of approaches to patent searching that will be useful to you regardless of your technical expertise or role in the intellectual property community.

Chapter 1

Patent Law and Examination as Context for Patent Searching

“If nature has made any one thing less susceptible than all others of exclusive property, it is the action of the thinking power called an idea, which an individual may exclusively possess as long as he keeps it to himself; but the moment it is divulged, it forces itself into the possession of every one, and the receiver cannot dispossess himself of it.”

—Thomas Jefferson, Letter to Isaac McPherson, Monticello, August 13, 1813

In hindsight, the third president of the United States and the driving force behind the establishment of America’s first patent laws in 1790 was ahead of his time. Jefferson lived when a subject matter like biotechnology was known only vaguely; maybe through a farmer’s knowledge of crop rotation, the use of manure, and the need for better soil preparation. Yet, the laws that he helped create still govern the practices of our present-day patent system and are able to encompass far-reaching technologies. Without knowing what the future held for intellectual property (IP), Jefferson crafted patent laws that continue to accommodate the review and prosecution of a myriad of technical subject matters.

During the early years of the U.S. Patent Office, a diligent search was important but not as difficult to carry out as it is now—considering a single cabinet (“shoe”) held all of the patents ever granted. The burden of the search was minimal on an inventor. In the present day, not only is a thorough search a “must” before entering patent prosecution (examination), but multiple searches at different stages in the life of a patent are now necessary. In the midst of our litigious culture, one has to be poised for unexpected miscues during their ideal patent term.

Patent searches before prosecution help improve the defensibility of the future patent, or can dissuade the inventor from prosecuting at all. Your preexamination preparation as an inventor, patent attorney, agent, or searcher will save the patent owner time and money later.

For example, consider spending US$25,000 to prosecute a patent application only to learn from the examiner that the invention lacks simple novelty. Worse, the examiner may not conduct an adequate search and you actually receive a patent that is later held invalid. The costs of that mishap will be enormous. A professional patent search will allow you to “look before you leap.”

The many available search types that will be outlined in this text will yield invaluable data for an applicant who wants to increase their chances of earning a profitable return on a corporation’s substantial investment.

The U.S. Patent System

Before discussing patent searching, it is first necessary to explain the patent system in the United States today, so that you and other readers can appreciate the challenges inherent in its navigation.

Thomas Jefferson’s quote speaks to the uniqueness and idiosyncratic prospect of owning ideas, the building blocks of intellectual property (IP), and the challenges that exist in their maintenance and development.

Intellectual property consists of patents, trademarks, copyrights, and trade secrets. Article I, Section 8 of the United States Constitution empowers Congress to “promote the progress of science and useful arts by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.” Of the three types of intellectual property created by the Constitution, patents offer their inventors the strongest protection and, not surprisingly, present the highest hurdles to overcome in their application process.

To receive a patent, the inventor enters into a quid pro quo with the United States government or any other government where a patent is sought. In exchange for the exclusive right to manufacture, sell, and use his invention, the inventor provides to the public a full, enabling description of how to make and use the invention.

The Benefits of Patent Protection

Governments expect that with new, patented information in the public domain, more scientists will be encouraged to innovate with knowledge of these technological and scientific advancements. This fact may be counterintuitive at first. You might argue that the public would actually benefit more if the inventor published their findings and shared their knowledge through the literary community. After all, the process would take less time and it is free. However, considering for example the patenting that occurs in biotechnology and the patenting of drug formulations, a company needs some assurance that they will have the exclusive right to a technology before they will invest millions in its development. Only a patent can give them this right.

In the United States, a pharmaceutical company has to invest heavily in initial research and development and subsequent testing and approval processes as required by the U.S. Food and Drug Administration (FDA).1 This substantial investment provides reasonable assurance of a profit—in the form of patent protection—if research and development (R&D) is successful. The high cost of R&D also affects others, including the electronics, automotive, and energy industries. Patents grant them exclusive rights to the technology for limited times to recoup their costs and achieve profits.

A mere disclosure of technology in a publication may not spur commerce, as it does not guarantee any such right and only discloses the researcher’s propriety information on which other groups may potentially build. Similarly, other inventions may require a great deal of groundwork or marketing before the invention included in their patent truly becomes accessible to and able to impact a field. In both of these scenarios, a large investment must be made by the patent owner (assignee) to prepare their invention to reach the public. Without having a guarantee for the exclusive right to manufacture, sell, and use a technology, it is highly unlikely that an entity would spend so much time, effort, and resources nurturing their inventions. A time period of exclusive control of patent rights affords the assignee the opportunity to recoup their research, development, or marketing costs inherent in the process.2

There are few assets that are as difficult to protect as IP. Therefore, it should not be a surprise that there are just as few assets in the global marketplace that demand the expertise of such a diverse population of professionals in order for the eventual worth of the technology to be realized. Patents have wide appeal across many fields, from a farmer in need of a genetically modified, insecticide-resistant soybean to a retired engineer who tinkers in his basement workshop, to a venture capitalist seeking a highly profitable investment opportunity—patents influence the choices of individuals in a variety of paradigms.

Readers may find themselves practicing their specialty in a variety of different fields: science, engineering, law, patent searching, or business development, to name a few. With the attention of such an educated and highly specialized group of professionals, obtaining and managing a patent throughout its life must not be an easy process; however, significant gains are expected once an exclusive right to a particular property is received.

The owner of a patent by right is its inventor; however, the inventor usually assigns his rights to his employer (corporation, university, or organization) in his employment contract. Therefore, the assignee has the exclusive right to the particular technology. The patent owner controls the ability to license the patented technology or to exclude others from making, using, or selling it.

Harmonization of Patent Laws

While a U.S. patent is enforceable only within the confines of the United States, there are steps being taken to harmonize the patent systems of the world, so one day many countries might have more uniform patent laws. A harmonized patent system will allow an inventor to receive patent protection in foreign countries more seamlessly. The goal of U.S. legislators is to protect an American patent holder’s rights and to facilitate the filing and protection of patents internationally.

The Paris Convention

Much progress has been made to accommodate the prospect of such a system. The evolution began in 1885. The Paris Convention was first signed in that year and since has been adopted by every industrialized nation (except Taiwan). In addition to creating the concept of priority, which gives the patent holder up to 21 years of protection in most cases, the Convention afforded new freedoms to inventors of the adopting countries. An inventor from any of the signatory countries may file an application in any other member country within one year of the filing in their home country and receive the benefit of the home country’s filing date during examination.

The Patent Cooperation Treaty

Then, in 1970, the Patent Cooperation Treaty (PCT) was signed and adopted by 100 countries. This treaty allowed patent offices around the world to share in the burden involved in patent prosecution, such as the search and preliminary examination of an applicant’s subject matter.

Trade-Related Intellectual Property Rights (TRIPS)

More recently, the World Trade Organization’s (WTO’s) Trade-Related Intellectual Property Rights (TRIPS) agreement ushered in harmonization efforts, including patent agreements through the General Agreement on Tariffs and Trade (GATT) and North American Free Trade Agreemen...