“Pat

Global Patent Mining : Tools & Strategies

ent Searching” in a Nutshell

2016©Jon Cavicchi

Professor of Legal Research

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.

Three phases of patent searches

Search Analysis

Report

Each search report is customized soCourse does not teach report production

Good search is foundation. Search report walks through

sources & approaches

From “shoes” to databases”

• 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.

There are as many ways to do prior art searches as there

are prior art searches…

Each search is uniqueDozens of searching platforms

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

Keep on top of changes in law of prior art…

AIA Statutory Framework

Prior Art35 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

• 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

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

Much of the world’s patent literature not searchable

Focus on…

• Purpose• Geographic scope • Budget

Money is almost always determinative

Multiplicity of sourcesMultiplicity of sourcesTypes of sourcesTypes of sources

ApplicationsApplicationsMultiple access points to same dataMultiple access points to same data

Who uses patent data sourcesWho uses patent data sourcesWhy use patent data sourcesWhy use patent data sources

Factors to choose access pointsFactors to choose access pointsSearch approachSearch approach

We will discuss today…

Small piece of patent informatics…

Finding prior artFinding prior artpatent as datapatent as data

non patent datanon patent dataCompetitor intelligenceCompetitor intelligence

Statistical usesStatistical usesPatent citations & innovationPatent citations & innovationPatent mapping & analyticsPatent mapping & analytics

Identifying intellectual assetsIdentifying intellectual assetsManipulate & present data in graphical mannerManipulate & present data in graphical manner

Intellectual Capital Management

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

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?

• 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

Plot competitors' product strategies, as well as ways to "patent-block" them

Gain patent-protected entry into lucrative but hotly contested marketsAcquire exclusive rights to emerging

market-leading technologiesIncrease R&D effectiveness and avoid

infringement minefieldsDetect possible infringers, as well as

likely sources of licensing income

TYPES OF “TRADITIONAL” PATENT SEARCHES

Pre and post granting applications

Patent search more than searching patents

Patent search involves reference to publications other than patents

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.

Disclosures can be anywhere

• Patent and non patent literature

Thousands of of non-legal print & database sources

NPL

SIRA STIC NPL MULTIBASE

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

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...

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…

Jorda to Ciba Geigy Pharma R&DFive 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

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…

PATENTABILITY

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

patentable

INFRINGEMENT

to form a legal opinion about problems adopting a course of action

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.

RIGHT TO USE

to determine whether a patent has expired & can be copied with

impunity

VALIDITY

before taking a license or litigation to determine whether a patent will

withstand attack

PATENT LANDSCAPESTATE 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

CONTINUING

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

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.

ANALYTICS

PATENT STATUS

whether any of the 28 +/- post issuance activities have occurred

• adverse decision• certificate of

correction• disclaimer• delayed fee

• error correction• expiration• extensions

• suits• reissue

• reexamination• withdrawal• assignment

Post grating actions include...

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

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...

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

BIG QUESTIONS FOR YOU

So many choices, so little time

Who drives the $$ chain?

Is money an object?

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?

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?

IN HOUSE OR FARM IT OUT

law firms and corporate department have no uniform practices

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

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

WHO TO PERFORM IN HOUSE SEARCH?

mix and match?

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

WHAT IS THE STANDARD OF CARE?

little guidance from the law

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?

The role of the free open web

Web as a source of prior art

How do I choose an online service?

FREE LOW FEE PREMIUM

REMEMBER…YOU CAN USE A SOURCE TO SEARCH, DOCUMENT DELIVERY OR

BOTH

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®

Searching & delivery examples…

• Patent Fetcher • Patent Pronto• Patent Storm• Getipdl • FreePatentsOnline• GetthePatent• Pat2PDF

• Sumo Brain• Patsnap• Patent Lens• Surf-IP

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

NPL• Patent and non patent literature

Thousands of of non-legal print & database sources

Tool to Compare Platforms

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.

IP Exchanges

&IP Supply

Chains

Traditional Knowledge Databases

Professor Cavicchi’s Iterative Hybrid Search Method

Intellectual &

Procedural Steps

Otherwise know as…

• Prior art• Patentability• Pre-ex• Initial

A good prior art search is an insurance policy to avoid validity issue expenses

Professor Tom Field

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.

Approaches

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

Some online search comparisons

CAPTURE&

CULL 2004 WL 64936393

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.

The issue of patents for new discoveries has given a

spring to inventions beyond my conception.

- Thomas Jefferson

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

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

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

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

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.

Non textual searching….

• Challenges Figures Drawings Diagrams Structures Sequences Letterforms &

typography

• Emerging Solutions PATSEEK ImageSeeker by LTU PatMedia

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.

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

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!

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!

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?

Patent search is an iterative process

• …continuous modification of searches as more information becomes available

• Recheck• Locate• Lead• Tips

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

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

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

Specialty Services for Life Sciences

What is the value added?

ContentCoverage

ScopeEnhancements

AccuracyError rate

Ease of use

Search sophisticationIntegration

Output flexibilityCustomer support

TrainingPricing options

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

Disclosures can be anywhere

• Patent and non patent literature

Hundreds of non-legal

Electronic databases

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

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…)

U.S. Patents on Dialog Example

Step 9: NOW begin to formulate search strategies

• Terms• Word variants• Truncation• Alternative search terms• Connectors

Logical operators Proximity connectors

Example

Formulate terms

Truncation…!…?…

Don’t forget other terms you might have…

• Inventors• Patents numbers• Classifications• Other cited references

Connectors

Logical operators

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)

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

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

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

Broaden & narrow search…

Unrestricted full text

Try different field restrictors:

Class

Spec

Abstract

Title

Mix & match with keywords

Bibliographic file

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

Step 11: mine the data

• Cull the results• Remove duplicates?• View results

Bib formats Full text Document delivery

Patent search is an iterative process

• …continuous modification of searches as more information becomes available

• Recheck• Locate• Lead• Tips

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?

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.

The end is only the beginning

USPTO WEB

• Two complimentary approaches 7 Step Process Search Engine Direct using hybrid approach