Patent Invalidation Search – Non Patent Literature Search Tool – Viewzi

Ask any researcher to provide you with non-patent literature instead of patent literature and he will

Its difficult to hunt for non-patent literature instead of patent literature and this is because of many reasons.

• Non-patent world is not yet structured as patent world
• Non-availability of good search interfaces
• Non-availability of single interface for search
• Difficult to find publication (date) information of non-patent publications
• and many others…

We have talked about one non-patent search strategy which uses Google Timeline.

Another good way of analyzing non-patent is through Viewzi. Viewzi provides a preview of the dates of the web pages, which helps a lot in quickly browsing through the results.

For example, if you are searching for something related to Multi-touch screen technology, you would get results something like this:

http://www.viewzi.com/search/cronotron/multi-touch%20screen

Its easy to navigate and provides more results per page for review. A very good source for non-patent search in patent invalidation search. This can also be very useful in patentability or novelty searches.

Moreover, if Viewzi is used in landscape analysis it can provide useful information about the market and companies/authors that are active in the domain.

A very useful tool in all kind of analysis related to patents.

Patent Invalidation Search – Addiction to Web

 

There are a lot of people who are involved in Web based tools for patent searching. I guess its not actually addiction to web but people become addicted to one kind of interface.

Its too difficult to separate one person from one database to another. So why not have a system which is quick. easy and simple and eliminate the need of a browser. You are free to change the Interface according to your own need.

Then I came across a new free tool from IPEXL ‘Excel Client’. This is a desktop based tool which is capable of performing search on various databases.

The best part that I liked about it was its reach to Taiwan and China.

Moreover, since the results are displayed in excel you can easily modify its interface to keep Title, Abstract and Claims together for speedy analysis. OR filter the results with the help of IPC etc.

I believe this should be a boon for the people who use USPTO. A very good tool for Patentability Search, Novelty search, Freedom-to-Operate searches and not to forget patent invalidation searches.

Moreover, people can use it to perform a quick landscape analysis as well. Since all the patents are in Excel one can use the inbuilt charting capabilities of Excel to draw quick charts.

You can download the tool here

Invalidation Search – Prior Art not the Only Way

I hope we have already discussed about few methods of invalidation here

I have been repeatedly focussing on the point that prior art search is not the only way of invalidating a patent. So I thought of summaring all the ways that can lead to invalidation of a patent:

● Maintenance fees aren’t paid
● It can be proved that the patent either (a) fails adequately to teach how to make and use the invention (b) improperly describes the invention (c) contains claims that are legally inadequate (one example has been earlier described here)
● One or more prior art references (earlier patents or other publications) are uncovered which show that the invention of the patent wasn’t new or wasn’t different enough when the invention was made the patent owner is involved in certain defined type of illegal conduct, that is, commit antitrust or other violations connected with the patent
● The patent applicant commited fraud on the Patent Office by failing to disclose material information, such as relevant prior art references, to the patent office during the period when the patent application was pending.

Thanks to Patent it Yourself for providing a ready summary. A very nice book for inventors (I must say).

Therefore, the analyst who is conducting the search should not limit his mind to identifying prior art references but he can also identify other facts that can contribute towards invalidation.

Happy Hunting!!…

Invalidation Search – Single Result

There is a lot of difference between providing one good result and all good results.

Majority of the new analysts that work under me are very happy when they get one good/relevant result in an invalidation search. Thereafter they work in peace and doesn’t stress much for more results as they are happy that they have invalidated the subject patent.

No!!

That is not what i’m looking for, or what the client wants. What I am interested in is identifying all the relevant patents that exist in the art. All the patents that can invalidate a patent.

This is what makes a case strong.
This is what that makes you win or loose a case.

So if you are doing an invalidation search, make sure you have all the BANG-ONs!!

Invalidation Search – Spelling Mistakes

Can anyone search this blog with its name (“My Search Strategies“)

No?

How can you reach here if you want to? forget about the other keywords that might bring you to this place

Any idea why?

Spelling mistakes!!

This is the major reason why we and the examiners miss out lots of relevant prior art.

While choosing the name of the blog I mistyped as I was in a hurry and even after wordpress confirming the name from me 3 times I missed it (happens). Similarly, there are various patents that include such misspelled words that get missed out even after multiple quality checks.

Now next time when you search keep all possible spelling variations in mind and include all possible word variations in your (keystrings or keystrngs or keystings or kystrings).

I cracked on invalidation using this strategy. If I would have not used it, I would have never been able to identify that hidden patent!!!

“Invalidation is an art not a science”

Invalidation Search – What’s Not Included

Everybody want to know the answers to such questions:

Where to search?
What to search?
How to search?

But nobody think about what are the things that are not searchable or the things that would be missing in your search. Here are few that are listed by Greg on his website.

What’s Not Included

Search engines include millions of pages in their databases, but none of them come close to indexing the entire Web, much less the entire Internet. Here is a list of some of what is missing:

The content in sites requiring a log in
CGI output such as data requested by a form
Intranets; pages not linked from anywhere else
Commercial resources with domain limitations
Sites that use a robots.txt file to keep files and/or directories off limits
Non-Web resources

Thats why I always say that even if you have not found anything in your search, it doesn’t mean that the patent cannot be invalidated. There are still lots of things that are/maybe present which are not seachable.

The same things applied for patentability search.

Invalidation Search – Google Timeline View

During Invalidation sometime it becomes very difficult to hunt for non-patent references on Google. As Google provide results based on the page rank.

A very good technique to avoid this problem is by using Timeline View from Google Experimental Lab.

You need to go to Experimental Lab of Google and join the Timeline view experiment. Thereafter, all the search that you will conduct on Google will be performed under this experiment.

Advantages:

Good tool in Patentability and Invalidations
Good tool for conducting market analysis for a patent
Good tool for identifying the growth in a particular technology
Good tool for learning about history of a particular invention/product
Good tool for identifying the lauch of a particular product
A timeline chart showing the growth or drop in number of results

Please note that the results shown under a particular year in the chart doesn’t implies that they were published in that particular year. For example, the result talking about a technology in 1995 doesn’t implies that reference was published in 1995. But it provides enough hints to modify the future search to reach the exact reference for that particular year.

Invalidation Search – Basic Concepts

Lots of questions are generally asked to me regarding intricacies of Invalidation search and what things to consider while invalidating a patent. Why we search in this manner and why we dont’ consider this?

I thought of putting the thoughts in the form of a post.

When client says that he want to invalidate the ‘First Independent Claim’ he mean the first independent claim w.r.t the specification.

Now this can be explained w.r.t various cases:

Sometimes the claims are written in such a simple language (this)that we can grasp the complete concept from the claims only and there isn’t any need to go through the specification. Which happens in majority of the cases. This might make some searcher assume that it is not necessary to go through the description and make this as part of their search strategy. However, this is not true in all cases.

When claims describe structural relationship (this), it is not easy to identify what actually is the invention just from the claims. For such claims we have to refer to the drawings or the description section to understand the structural relationship. Now when structural relationship is described in claims, claims would always look broad as it is not easy to describe a figure in words. In such cases claims are always read w.r.t to the drawings and the description.

There might be another case where claims include phrases such as “a video image specification that is based, at least in part, on pre-defined configuration data“. From such phrases it is not easy to determine what actually is happening and writing such sentences also doesn’t broaden the scope of the claims. The examples of the pre-defined configuration data given in description would act as the scope of the configuration data and in turn define the scope of the video image specification.

Now the question arises that why don’t we write directly those examples in claims itself? If we start describing all the examples in claims, claims would ultimately turn into the description.

Moving forward, the question that why we cite such references that include embodiments that are not present in the specification of the subject patent can be answered based on obviousness criteria. The attorneys can uses such patents, on the basis of obviousness, to invalidate the claims and make their case stronger. Various references can be combined together to prove the concept that it is obvious for a POSITA to come up with concept that is claimed in the subject patent.

However, obviousness is such a criteria that can only be decided in the court. So our objective is to provide as many facts as possible that can help the client in the court.

People at major corporations are daily sued by many people around the world, some people follow the strategy of finding out prior arts corresponding to each clause independently (of the first independent claim). This is something in addition to what is done in general invalidation. Then they send multiple different prior art for each clauses along with other prior arts that map on to multiple clauses and try to question the validity of the patent.

All this is just a part of strategy that they use so that they can resolve most of their cases out of the court.

So to summarize, ideally we should only search for embodiments that have been described in the description. But this is only considering the invalidation with respect to USC 102. But this is not the only way a patent could be invalidated.

There are three options:

U.S.C 101 – Inventions patentable (Which we don’t check as there are rare chances that a granted patent would not satisfy this criteria, though their could be few cases)

Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title [35 USC § §1 et seq.].

U.S.C 102 – Conditions for patentability; novelty (Which we check by searching)

A person shall be entitled to a patent unless–
(a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or

(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States

U.S.C 103 – Conditions for patentability; non-obvious subject matter

A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title [35 USC 102], if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.

USC 102 requires an exact match, however 103 does not.

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’