A United States patent search is normally the first step in the patent application process. Such a search is used to determine whether the time and expense of moving forward with a patent application is a worthwhile endeavor. The patent process can be expensive, so the last thing you want to do is spend a lot of money preparing and filing an application when there is easy to find knock-out prior art that will prevent a patent, or at the very least make any patent that is obtained extremely narrow. For this reason many inventors and businesses will choose to begin the process by paying for some kind of patent search. Of course, careful review of the patent search report, any opinion or assessment provided by a patent attorney and thoughtful consideration of the patents that are found is critical. Unfortunately, in my experience a lot of inventors only give a cursory review of the patents found, thereby missing a great opportunity to use the prior art found to focus in on what is most likely unique and patentable.
Recently a comment was added to an older article titled The Top 5 Things Inventors Do Wrong, which said the following:
Gene, I know this is an older post, but I couldn’t help but add a no. 6 to the list. This happens frequently and when patent counsel is on board, no less. A patent/novelty search is performed by a professional outside search company (at my insistence) and perhaps 50 or so “hits” of patent and non-patent prior art are cited in the search report. Although the report does not provide a detailed opinion as to patentability, the search professional states in the report or accompanying email that the first 6 or so cited references appear highly relevant to the disclosed invention. I forward the search report to the client, along with the necessary instructions and required disclaimers, and ask the client to review the search results and provide me with comments for discussion. Inevitably, the response in each case from the client is a simple two-word statement: “Nothing relevant.” That leads me to believe two things: 1) the inventor did not review the search report, or 2) the inventor is clueless. Given that in each case the inventor is highly knowledgeable, analytical, and understands the technology (whatever it may be) at a sophisticated level, I tend to think that it is the former – the inventor simply did not read the report, or only gave it a very cursory review, e.g., only the titles of the cited art were considered. Whatever the case, this is a huge mistake. I know it is tedious, but I need inventor/client input as to prior art for claim drafting strategies. I always encounter resistance as to this important, IMHO, step in the drafting process. Your thoughts? Does this happen to you?
I do see this more frequently than I would like, but I do everything I can to work with inventors to get them to understand the need to focus on the patents located. I think most inventors read the patent search report, but an awful lot do not actually read the patents themselves. What I try and do to get inventors to focus on the patents that matter the most is to identify the few that are the most relevant and then engage in a discussion with them about those patents, steering them to focus on the parts that are closest and need to be distinguished.
The inventors that I work with are highly intelligent and motivated, and when you explain to them the process they seem to understand the task at hand. By and large most seem to be looking for guidance, so a step by step approach can be quite effective. The inventor has the knowledge of their own invention, and when they see something that looks similar they can be coaxed to provide critical information; namely that the reference is problematic or there is an aspect of the invention that perhaps has not heretofore been described with as much detail as possible. Through a collaborative approach I find that I can work with inventors to identify the patents that are truly the closest and how those inventions are similar and how they are different.
Determining how the prior art is similar and how it is different is essential to being able to offer an opinion, and it also allows for the gathering of a great detail of information about the inventor’s invention, which will be extremely helpful if and when the inventor decides to move forward with a patent application. The amount of detail that can be put together makes writing a patent application a much smoother process, and invariably leads to a far more detailed written description of the invention. If no serious road blocks are found the patent search can and will normally lead to a better, stronger patent application. The reason a patent search leads to a better, strong patent application is because the first application filed is absolutely critical. All aspects of your invention must be disclosed, nothing new can be added without compromising the all important filing date (aka priority date). With a search the initial disclosure can be specifically written to carefully define and expand upon what is most likely the patentable feature or components.
Not only does a patent search allow for focus to be placed on what is different and most likely patentable, but if knock-out prior art is found then the expensive a patent application has been saved. I always tell inventors that they are creative people, much in the same way an artist or song-writer is creative. In my experience, all creative people are creative by nature and that typically means future creativity. If you spend all your fund and strain your resources on the first invention you may be necessarily putting yourself in a position where you cannot move forward with what is next, and what is next might be even better. There is no way to know for sure, and taking risks on some level is necessary to succeed, but starting with a patent search leads to a better product and can help you cut and run, moving on to whatever is next if the likelihood of obtaining a patent is low, or the likely resulting rights would be too narrow to warrant the time and expense of a patent application.
Many times people will say that they have already conducted a patent search themselves and have found nothing, and/or they will say that they have never seen anything like it in the industry. These are all helpful, and such study should be undertaken by every inventor, but if you are not intimately familiar with searching techniques, as well as intimately familiar with the Patent Classification System, you are all but certainly not going to find what you are looking for in your own search. Almost every time I search I am searching for inventors who say they found nothing, and every time I find patents that were findable in the Patent Office database but not located by the inventor. Sometimes that patents are tangentially related, sometimes they are quite close and sometimes they are exactly what the customer has invented. In my career I have personally done several searches where the customer said they looked and when I searched I found the exact invention already patented. But this is why you do the search. It is better to spend now to learn about the prior patents than to spend several thousands of dollars only to learn later that no patent could be obtained. Having said this, doing your own search and learning whatever you can from the prior art makes all the sense in the world. For those who are interested in a searching primer see Patent Searching 101.
Join the Discussion
18 comments so far.
american biologicsJuly 27, 2010 07:23 pm
determining how the prior art is similar and how it is different is essential to being able to offer an opinion and it also allows for the gathering of a great detail of information about the inventor’s invention whic will be extremely helpful; if and when the inventor decides to move forward with apatent application.
Chris JagallaMarch 24, 2010 11:20 am
Thank you for the apology and the kind words about Intellogist. I agree that when anybody posts comments, we need to be constructive and “add value” to the conversation instead of just promoting ourselves. It is my belief that we can all do our part to add to the level of discourse on *every* forum, be it this blog, Patently-O, Patent Baristas, PIUG, Intellogist, LinkedIn, Ning, or elsewhere. A rising tide lifts all ships, and I would like to see all of these avenues (and more) thrive and prosper.
MikeMarch 24, 2010 11:14 am
Well said public searcher.
I do think some of the comments, especially on some sites by other “search” companies are more annoying than Chris and Kirsten, you guys are usually close to the point and I always appreciate a RELEVANT article. Sometimes, especially on Linked IN not really here as much, we get overwhelmed with off point comments, broken responses in incomplete sentences, and too many “Join my network” requests.
The search field has changed, some of the outsourced products are not as well written or on point as a good search. Many are lacking the search skills and count on automation to make their search look good. Good for us that no machine has been able to create and modify a search to get the best set of results, yet. I am waiting for an automated “fuzzy” text analysis that identifies unique words and related patents based on the entire patent text.
No one can see into the future, search techniques have definitely improved but so has the exponential growth of information. It is sad at this time of great computational thinking, short sighted and self serving people would try to unjustly limit patent protection for software patents. Well drafted, well documented, well examined patents with real prior art for software should never be hindered.
Public Searcher DIPMarch 24, 2010 10:57 am
All, thanks for the dialogue…
Chris and Kristen, I’m sorry if my comment appeared to be from left field. The world of patent searching has changed dramatically in the last few years and the two of you are merely part of that. Instead of dying as everyone thought would happen with the advent of the internet, the business of patent searching has exploded. More patents, more databases, and most importantly, more money means that new players have entered the field (including your employer who converted from a file wrapper business to a search and analysis business with the help of a nice government contract).
The new players merely do not play by the same rules that we old hands have played by for a long time. We always considered ourselves a subset of the legal world. Selling was frowned upon. No one had marketing departments or sales peoeple who called on potential clients every day of the week. Word of mouth was the manner in which a business grew.
But times change and patent searching is very much a non-regulated business. As much as many of us consider ourselves junior law types, we are not (even when agents). Big companies (based both here in the US and farther afield) are now the norm and the game has changed. There will always be room for smallish outfits providing direct communication between the actual searcher and the requesting party, but we are fading into the sunset it seems. Not a new complaint, just the same old story that has occurred in numerous industries (service or otherwise).
Btw, I do applaude your attempts to create a back and forth dialogue through your Intellogist website. The content you are providing is generally lacking on the internet and you are filling a void. Think of my lashing out as mere jealously!
American CowboyMarch 24, 2010 10:37 am
I don’t put anything in my opinions that suggest “you might infringe the X reference that I found.” That discussion is a phone call.
Frankly, if the clients don’t want my type of search and opinion because they think it is too expensive, I am happy not to have them as clients. My experience is that clients who want to cut corners here don’t have the money and somewhere down the road they will stiff me for other work I do for them. Better to not have them as clients.
Gene QuinnMarch 24, 2010 10:02 am
I agree with you. What clients want is an opinion and some guidance. Having said that, I don’t want to throw searchers under the bus though in a blanket way. A lot of inventors want to pay for a search only and then want an opinion too. I think that is what drives a lot of the discount search services out there. The searches may be good, but what winds up happening is the inventor gets overwhelmed, winds up reading only the search report with 1 paragraph per patent, usually the abstract, maybe looking at the pictures and then getting a completely inaccurate idea of what the search means.
I think you hit the nail on the head when you say this takes a lot more time, effort and raises costs. My approach is to provide the omnibus search and then focus the inventor on the references that need the most attention, usually in the 3 to 5 range.
I definitely also agree that while this costs more at the outset it really provides a roadmap for the application. You have defined the target and know what the differences are, necessarily knowing what then needs to go into claim 1. Following this process the application writes itself (with time of course) and really allows more emphasis to be placed on blowing out the specification to support any number of claims should the invention wind up turning out to be worthy of that kind of patent effort.
Now… if only it were easy to convince clients of all this! Luckily most who are serious understand the importance, but those with limited budgets would be doing themselves a big favor if they spent more money on the front end. I find a lot of times those with limited budgets are the ones that have inventions that are quite similar to the prior art. I know this is a gross generalization. I would love to hear what others think about this generalization though.
MikeMarch 24, 2010 09:10 am
RE Chris’s posts… I’ll play the middle of the road devil’s advocate.
One post per blog saying “We have an article on that” – Not bad.
More than one post repeating over and over again, “Check out Intellogist” without reference to a specific article – SPAM.
Shades of grey in between, well, that’s what has been happening. Not too bad when they reference a relevant article.
MikeMarch 24, 2010 09:02 am
The search report should NEVER in writing point out what is “infringed” or “blocking.” I’d hate to be sitting there trying to explain that away during litigation.
If you find a close piece of art, ask the inventor what is different. If you find EXACT, section 102, anticipation or novelty blocking art, you should call the inventor and discuss the either differences and/or ways to design around the art.
Remember, in the US, if you SAY in writing it is prior art and then find out it’s not, it is still considered prior art. I never use the term prior art, but instead use the term references just to avoid the date and invention analysis on everything. Since I wasn’t there when the inventor conceived the invention, I have no right to classify anything prior art.
I am a patent agent, but have helped draft search reports, written opinions, and file history analysis. As a patent agent, I can and do prosecute before the USPTO as well as assemble search reports. I provide one of two summaries next to each reference in the search report. 1) a copy of the relevant text and 2) a statement of “not relevant” or “background” with relevant text from the art. For example, “Not relevant, claims recite yada.”
A detailed written opinion is an expensive document, $50K plus, explaining why you don’t infringe a patent. A search report on the other hand should contain the ~10-20 relevant patents that paint the background of the patent application, all references should be different in distinct ways from the claimed invention but relevant to the field of the invention.
Chris JagallaMarch 24, 2010 09:02 am
Call a spade a spade (or whatever alias you choose to use),
As you may note, my original comment was more than just a link to another blog. First and foremost it was a compliment to Gene.
Public Searcher DIPMarch 24, 2010 08:08 am
I agree that what you are providing is significantly easier for an inventor or client to read and understand, but you are creating a legal document (with it’s matching additional cost). You are obviously an attorney and have been trained on how to draft a patentability opinion and have the malpractice insurance to back it up.
On the other hand, the vast majority of patent searchers are not attorneys. Some are agents, but usually not practicing agents. Virtually none are qualified to give a patentability opinion, lay out references and safely compare differences, and certainly do not carry malpractice insurance for accidentally providing an opinion. The last thing anybody wants is some 22 year old kid with 3 months of training as a searcher saying your clients widget is not a doodad in a discoverable document when the patent goes to litigation 5 years later and you’d like doodads to be considered widgets for infringement purposes! This is one of the major danger points in the new wave of value-added analysis being asked of patent search firms. Be very careful of what you ask for…
I’ve always considered a patent searchers work to be a first filter for a patent attorney. The searcher reviews several thousand references and culls this data to a dozen references. With non-characterizing annotations, these references are provided to an attorney. There are plenty of ways to put emphasis on the most relevant references without explicitly saying “Look at these 3 which are 102(b) references”. It is then the attorneys job (at a higher billing rate than the searchers) to go through the dozen references and identifity points of novelty. It’s a two step process that allows everyone to leverage their specific skills and provide a better bang-for-the-buck to the client.
Professionally, it truly concerns me to see the attorney role being skipped or eliminated from this process. Too often, patent search firms are volunteering (rushing to do so in droves since it is quite lucrative) to provide the analysis that an attorney should be providing without the legal skills or background to do so. While this may seem a great cost savings to some corporate clients, it appears to be a dangerous path to follow.
Kristin WhitmanMarch 23, 2010 11:30 pm
I agree with what Chris has already said in response to your post. Since your comment mentions me, I’d like to add a very short note in this forum to clarify a bit more about what I do. I have been a patent searcher in the past, and for multiple years now I’ve been learning about search systems in-depth and writing content for Intellogist. During this time I’ve gone to school at night to get my masters degree in information science. I am deeply interested in, and I would even say passionate about, the topic of search in general and patent search in particular. Chris has also been a patent searcher for years and I know from working with him that he also has this interest.
I also want to add that I think your goal of sharing your experiences and knowledge to highlight the professionalism of patent searching is extremely important. It is a goal that we share. I do participate in social media forums and link back to relevant Intellogist content where appropriate. But I specifically want to point out that I also contribute to discussions on PIUG. If you perform a search on my name, “Kristin Whitman,” in the PIUG wiki you’ll see that I’ve contributed to my own thoughts and opinions to PIUG discussions (these are not the official positions of my employer, but my genuine contributions as a participant in the community). And I’d also like to add that everything that I have written, both for the Intellogist product and elsewhere, has been based on my own opinions and convictions.
Thanks for allowing me to add this note about my own background to the conversation. Although I should look into getting some business cards with “social media marketing flunky” printed for the fun of it. :o)
American CowboyMarch 23, 2010 01:43 pm
I was taught to narrow down the collected references to the 2 or 3 or 4 most pertinent and then — in the opinion letter — explain what they show and how it compares to the elements of the invention. Search report letters that merely say: here is a list of the prior art references we found, without any explanation or analysis are, in my view, just about worthless. They provide no guidance to the client, who, after all, is paying for advice at this stage — not advocacy. They invite the client to mirror your cursory discussion with the cursory treatment that Gene deplores. Yes, it takes a lot more time and effort and costs a lot more, but it is much more meaningful to the client.
I also add an opinion of patentability that goes into what I think an examiner is likely to conclude. If the conclusion is that patentabiity seems unlikely, I invite the inventor to point out the errors or omissions in my analysis. If the conclusion is very favorable, I may say a patent claim that includes yada, yada & yada would appear to be allowable.
Later, when I start writing the application l can look at yada, yada & yada and already have the first claim. The efficiencies in application drafting help to make up for the extra cost of the search and opinion.
call a spade a spadeMarch 23, 2010 12:53 pm
“Blog spam, or ‘blam’ for short, is spamming on weblogs… by repeatedly placing comments to various blog posts that provided nothing more than a link to the spammer’s commercial web site.”
— Quoted from Wikipedia’s entry on spam (electronic).
Chris JagallaMarch 23, 2010 09:47 am
I’m sorry you don’t find my comments to be informative or helpful to the discussion. You are entitled to your opinion about Landon or Intellogist, and needless to say I disagree that a site that is free to use and provides an incredible amount of content such as Intellogist is so bad for the patent community. I certainly don’t mean my comments to be spam, only further reading or information to people who may be interested. It is the nature of blogs to comment and be part of a community of blogs. If Gene thought my comment was spam, I’m sure he would not have allowed it to be posted, since all comments on IP Watchdog go through moderation.
It’s my stance that a greater amount of well researched information benefits the whole patent community. IPWatchdog, PIUG, Intellogist, Patently-O and many many others can all co-exist and flourish.
That is all I have to say on the subject, thank you for your consideration,
MikeMarch 22, 2010 12:46 pm
Classification search is very helpful. I never realized how much I use it, without entirely relying on one or the other (keyword or classification). Often several keywords are used in multiple industries with different meanings, or the same meaning with different applications. Either way, you don’t want results for automobile engines if you’re looking for cellular pH sensors. In this case using the EC classification search [ G01N33/68F] with the word sensor will allow you to bring up a manageable group of protein sensors . This eliminates anything that may have the word protein and sensor in the same abstract/title . The caveat being, you are at the mercy of the person who classified the application and no two people classify things the same way, when an ENT sees an elephant he sees a trunk, when a proctologist sees the elephan it’s just a big…
I always rely on what’s present in the application – copy of the main claim, copy of the most relevant figure, whatever is required to show the invention. The trouble is, inventors don’t want prior art. They frequently say that so-so is a competitor, doesn’t count because they cheat, my results are better, yada, yada, yada… I often ask them to state in writing using one paragraph or less, the differences between their invention and that described. They usually give a pretty good explanation that can be used in the application text.
Public Searcher DIPMarch 22, 2010 12:26 pm
Good post and I will give you props for the searching 101 primer you host on your site. Enough information for most users and even some useful tidbits for those of us who are old hands.
Off topic aside…
Chris J., Could you (and your fellow LandonIP marketing flunky Kristen) stop spamming every single blog in the patent world with subject matter relevant to patent searching with links to your pseudo-neutral ode to your employer. Why not channel your energy to support truly neutral patent search communities like PIUG rather than foisting links to your not-really-neutral-site upon us all. As a person who would like to share my experiences and knowledge with people to hopefully raise the very meager professionalism of patent searching, I refuse to do so under the banner of my direct competition. (Gene, sorry about the rant. The un-intellogist spam really gets me riled up.)
Back on topic…
I think one of the difficulties in having inventors review a prior art search is the extreme non-characterizing documentation that we as patent searchers have been trained to provide. The fastest way to lose a paranoid attorney as a client and get yourself in a lot of trouble is to use plain English to explain similarities between a reference and a disclosure. Instead we use extremely limited Figure and col/line annotations that are perfectly clear to a patent attorney, but are as boring as law review footnotes to a creative inventor. I do not know a fix to this other than “prettier” reports with actual patent drawings incorporated and fuller quote-unquotes from the specification rather than col/line pointers.
Public Searcher DIP
Chris JagallaMarch 22, 2010 09:41 am
Gene, you make a good point that patent classification is a helpful tool that the inventor most likely will not be familiar with. Problems with keyword searching are legion as the above commenter Mike pointed out with his “flibbertigibets” example (gee, that was just fun to type).
Even patent searchers can use reminders and resources tailored to improve their classification searching. I covered the basics of classification searching and posted links to helpful resources in an Intellogist blog post last week: http://intellogist.wordpress.com/2010/03/16/classified-information-patent-searching-by-classification-part-1/
Thanks for another interesting blog post, Gene!
MikeMarch 22, 2010 08:20 am
Patent searching is definitely an art and needs to be undertaken to find the closest possible patents. A good patent application can only be drafted in light of the closest prior art.
Often inventors search the patent databases but put too many terms thus getting no results. The trick is to find the right combination of terms to return the best results. If you search for “and,” “the,” and “wherein,” your search would return tons of irrelevant patents. Alternatively, if you search for a specific term like “flibbertigibets” or “flibbershnibbets” you will come up with “0” patents, even though there are patents to messaging and gossip. The terms must be specific to the industry but generic enough to encompass all closely related inventions.
Databases will also play a roll in the types of results. USPTO will only return issued/published US patents and applications. Espacenet only searches titles and abstracts. Commercial, indexed databases (Lexis, STN, Derwent, Delphion, QPat, etc.) have more searchable patents, each having their own benefits. Most with arcane search routines that make google’s innovations quite apparent. Google patents, same database as Espacenet in case you’re wondering.