Invalidation Search – Double Double

I’m standing in line in a strange town, waiting to buy a cup of redbush/honeybush/rooibos tea, the tea so good it needs three names.

There’s an angry woman at the front of the line. “Double, double,” she says.

The barrista stares blankly. “How can I help you?”

“Double, double!!”

“I’m sorry, do you want a coffee?”

“DOUBLE, DOUBLE!” (At this point, it occurs to me that this might be local jargon for ‘double cream, double sugar in a standard coffee’).

Sometimes, we get hung up on catch phrases and jargon that work great when everyone understands what we mean, but fail to bring understanding to outsiders. Yelling louder isn’t always the answer. Changing your words might work better.

[Graham and others have pointed out that every self-respecting Canadian knows that Tim Horton's coffee chain not only sells the double double but promotes it heavily. So the clueless server was truly clueless. My point stands... when someone doesn't understand what you're saying, saying it LOUDER doesn't usually work.]

I read this above experience from Seth Godin blog and thought that the same learning could be used for an invalidation search.

There are many people who keep on using the same words and make 20 different key strings. Is that of any use? Saying Double Double again to the patent database would not yield relevant results.

Change your way of talking after every few strings. I consider search string as a way of communication with the databases and I love to talk with them.

My point stands… when someone [database] doesn’t understand what you’re saying, saying it LOUDER and AGAIN doesn’t usually work.

Invalidation Search – I found nothing

Absence of evidence is no evidence of absence

Even experienced searchers cope with cases where no relevant results have been obtained. This does not mean that no relevant document exists or can be found. The above maxim is well known among archaeologists: if you do not find remains of an old temple, it does not mean that the temple did not exist or cannot be found elsewhere. Espacenet

Searching is therefore not just a science but also an art. It is not just limited to the search strategies but also the psychology of the (re)searcher.

In patent searches such phenomena happen quite often and for various reasons:

- A searcher may not have used the winning combination; a common case among novice searchers.

- Some fields you are using like the classification are absent from certain patent records. This can be the case in databases covering collections that have not be classified for instance.

- Lateral words that might have missed out. By Lateral words I mean the words that describe the same concept in a very diffrent way. Believe it or not there are always patents like that…

The above points could be increased to any number but the first strategy of every Patent Invalidation Search should be to make a mindset that:

‘There EXIST a patent that will invalidate the subject patent’

US and Europe Invalidation Search

US is a first-to-invent country (at the moment) whereas Europe and most other jurisdictions have first-to-file rules.

That means that if a patent application was filed in the US and in Europe on July 1, 2004 and you found invalidating art with a publication date of June 1, 2004, that art would likely invalidate the European patent (I have not studied European law, but this is my understanding), but the US applicant would be able to avoid the art by declaring under oath that he/she/they had invented the claimed invention prior to June 1, 2004. This process is called “swearing behind” prior art.

It is fairly easy to swear back up to 6 months from a filing date to avoid prior art. More than that will require solid documentation. Beyond showing a date the invention was first conceived or reduced to practice, you need to show that you continued developing the invention (due diligence) up until the date the patent application was filed. As you can imagine, the longer you swear back, the harder it is to document first invention and continuous development.

The link below from the US Manual of Patent Examining Procedure explains swearing behind a reference.
USPTO

In Europe, it is possilbe to file an opposition against a granted patent (up to 9 months after the date of the publication of the grant). Opposition can be made on the grounds of non patentability (e.g. lack of novelty, lack of inventive activity), and/or absence of sufficient disclosure of the invention, and/or extension of the subject matter of the patent beyond the application as filed.

This is probably the “most efficient” way (time / money / substance – wise) to fight against a patent in Europe and obtain amendments or revocation of the contested patent.