Analogy, argument and logic
Analogy, argument and logic
The patent system has a basis in the field of logic. Comparisons, heirarchical relations, and arguments (i.e., premises-conclusions) are all part of making judgements regarding the relevance of patents found during a patent search.
The foundation of an effective patent system is its classification system, i.e., its system of organization that allows relevant patents to be found in the shortest time. In the early days of the patent system in the US, during the time of Thomas Jefferson in the late 1790's and early 1800's, the few hundred to several thousand patents were organized in alphabetical order according to the inventor's name and by the date of issue. Thus a list of issued patents was periodically made, usually annually. Often these were reported to Congress.
However, as technology expanded and scientific discoveries were made, the collection of patents grew and required an organized scheme to find relevant patents. Thus in 1830, the first patent classification of the US Patent Office was published, organizing 6170 patents in 16 classes. Examination of patents (as opposed to a registration sytem) began in 1836, with 9800 patents and 22 classes.
Today, about 4000 patents are issued Tuesdays every week (regardless of holiday)! On November 18, 2003, the total number of US Patents reached 6651253. Assuming that there are 4000 examiners in the USPTO, then, on average, every examiner issues one patent each week, or every examiner issues about 50 patents each year. Primary examiners issue more than junior examiners.
If foreign patents and published applications are included, the total number of patents and published applications available increases by a factor of 5.
Therefore, if the organization of just over 6000 patents in a useful classification system was important in 1830, the importance of organizing a collection that is currently three orders of magnitude greater in size, is necessarily even more significant today.
Historically, patent examiners were responsible for the classification system. The degree of effort in maintaining the classification system and improving it, has varied considerably over the years. Recently, particularly in 2003, examiners previously assigned to the classification divisions, have been reassigned to the examining divisions. Of course, in order to for the USPTO to issue "strong" valid patents, i.e., patents having maximum protection encompassed in the broadest possible claims and free from validity challenges, the classification system must be strengthened not weakened.
Assuming that the examiner or searcher has uncovered the most relevant prior art, then a decision can be made (on the part of the examiner) or a report can be written (on the part of the searcher) that is well based. However, all indications are that the rate of patent issuance in increasing, thereby rapidly increasing the volume of the patent databases.
The searcher obviously has quite a sizable amount of information to sift through before reporting the results to their client.
Competant searchers will have dictionaries and thesauri on hand to determine nuances of various terms used in the documents. Standard dictionaries are useful for interpreting claim recitations. Technical dictionaries and vocabularies are useful for background and detailed description portions of the patent specifications.
The ultimate basis for placement of patents in the USCS (US Patent Classification System) is the claimed disclosure; additional cross references can be placed in the USCS based on non-claimed disclosure, but this is entirely discretionary by the examiner. Unfortunately most examiners base their placement of issued patents only on the recitations of the claims. This makes the contents of the specification of many relevant patents unavailable to searchers who search only by classification.
Most of the more than 400 classes of the USCS have a generally consistent heirarchial structure. For example, simpler subject matter generally follows complex subject matter in the class schedules, and subcombinations follow combinations. Section 900 of the MPEP (Manual of Patent Examining Procedures) covers classification and the basis for placement of issued patents.
Examiners, especially supervisory patent examiners (SPEs), express uncertaintay about search areas and placement of patents in the USCS by the term "analogy". The adjectival form is used in the phrase "analogous art". The Classification Definitions provide some guidance to users of the USCS to find analogous art areas. However, section 904.01(c) entitled "Analogous Arts" states:
The determination of what arts are analogous to a particular claimed invention is at times difficult. It depends upon the necessary essential function or utility of the subject matter covered by the claims, and not upon what it is called by the applicant.
The statement that this determination is "at times difficult" is quite an understatement. More information regarding analogous art is provided at MPEP 2141.01(a). Note that the USCS is one possible measure of analogous art.
Thus, examiners will use arguments of analogy between art areas in formulating their decisions in official Office Actions. Yet the Classification Definitions do not always reflect the art areas considered to be "analogous" to examiners.
The competant searcher will frequently access the Classification Definitions to determine analogous art areas and lay out a search while considering analogous art areas not provided in the Definitions. The Definitions also provide additional interpretations of subject matter contained within the class, the lines between similar or related classes, and vocabularies. In the chemical classes (e.g., 500's) and some other classes, images are provided. The searcher can then consult knowledgable examiners in all of the areas considered to be analogous to verify relevancy.