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Quality Searches

Introduction

The difference between quality (also, "adequate" or "satisfactory") searching and otherwise, in general, is thoroughness, which includes scope and accuracy. In order to reach the necessary breadth of scope of the search for obtaining the most relevant existing documents directed to the inventive concept, a large repertoire of resources must be available, including USCS (US classification system) class index, schedules and definitions, examiners (usually by phone), IPC schedule, ECLA (European patent classification), USPTO on-line search, trademark search (uspto.gov), USPTO facility search (EAST, WEST, PUB), internet search (ixquick and google), bookstore (e.g., Borders and Reiters), popular and technical periodicals, standard and technical dictionaries, thesauri and various technical and non-technical books. The searcher needs to be aware of and proficient in using these resources. Therefore, although a quality search takes a longer time to complete, the advantage of a quality search goes directly to the application writer, eventually to the prosecuting agent/attorney and ultimately to the client, who will eventually obtain the broadest possible and strongest patent protection. Also, a client will be better able to understand and review the documents uncovered by a thorough search of the inventive concept. Moreover, when the client seeks advice about whether to pursue a patent by filing an application, both the client and the person advising the client can make a better informed decision at an early stage when the overall process is beginning. Finally, a thoroughly searched inventive concept can prevent great loss of time and cost later, the time and cost increasing with time through prosecution and even after the patent issues.

Resources and Types of Documents

The uspto.gov web site has the following available features: text search on entire patents and publications from most recent patent issue and publication date (about 10-30K issued every Tuesday) to those dating back to 1976; images for all pages of all patent documents from the very first (1792); various index search capabilities (e.g., inventor, assignee, examiner, classification, abstract, title, claims, etc.); classification index, schedules (about 250 classes), definitions, examiner names and phone numbers, and trademark search. The benefit of performing a trademark search is being able to identify the company, product description and date of introduction into commerce for a particular trademark. This information can then be included in a search query in other databases.

The USPTO patent search facilities (main search room between Crystal Plaza 3 and 4 and Biotech search room in Crystal Mall 1) have the same features available as the web site, but have much faster response and flip rate; provides EAST, WEST, PUB, Classification index, schedules, definitions; also, searches in EAST and WEST can be extended to include the EP (European Patent) and Japanese Patent databases, unlike the uspto web site. EAST (Examiner Automated Search Tool) and WEST (Web-based Examiner Search Tool) provide the same information and the same query structure, but have different "feel", i.e., different query entry screen and display formats. A separate trademark search facility is located in North Tower located in the far south end of Crystal City.

The European/espace web site includes text search capabilities for the European database which include US patents; ECLA (European classification) which is an extension of the IPC (International Patent Classification); ECLA includes all of IPC, but is twice as large, therefore a subgroup (corresponding to a "subclass" in USCS) in ECLA can provide considerably more accurate results with fewer documents to review than IPC; also, since the approach to the IPC/ECLA systems is somewhat different from USCS, it is often possible to obtain pertinent teaching or initiating references more quickly.

A pertinent "teaching reference" includes information in the background portion of the specification that describes historical patents and related information that has led to the relatively new field of technology. A pertinent "initiating reference" (also, "starting" or "nucleating") provides a starting point for finding other related documents, by using that patent number to find other documents that cite it as well as references it cites; this process can be referred to as "threading". Pertinent teaching and initiating documents that are obtained by text searching can also lead to other valuable information that is useful in a search, such as name(s) of inventor(s), examiner(s), products, terminology, and classification. Therefore, after a text search reveals a relevant document, the classification information can be checked to determine whether it is directed to the inventive concept being searched.

Often the inventive concept is difficult to define in a manner that expeditiously leads to pertinent documents. This may require use of a thesaurus and/or dictionary to obtain the words or terms that help to locate the relevant documents. Note that a word search conducted on the USCS must be carefully constructed to avoid missing relevant classes or subs. For example, one entry in the schedule may use the word "reduced pressure" while another "vacuum", both meaning the same concept and both possibly being relevant. Another example is the use of the words condenser and capacitor, both meaning the same, but the former is a holdover from earlier times before the introduction of the newer that has never been changed.

A search on the internet can also be informative and revealing, and requires careful construction of the search query as well, otherwise valuable information can be missed and significant time lost, depending upon the connection speed (dial-up is slowest, cable modem and DSL much faster, T1-T3 usually only available to businesses are fastest), server and processor speeds, and speeds of nearest routers. The search query for an internet search might be directed to a particular product or company or industry. For example, if the field of the inventive concept is well defined, then a search query can be constructed to find a particular relevant association or industry group, where additional information or links can be found. These, in turn can be used to construct queries on the US and other patent or trademark databases.

Note that there are various patent offices around the world that publish their applications and issued patents, often in non-english languages. As more countries become part of WIPO (World Intellectual Property Organization), part of the UN (United Nations), they add new documents and web sites. Cuba even had a web site that sometimes was available, for reviewing Cuban patents. The word "patent" is often replaced by either "intellectual property" or "industrial property" in the world arena. "Intellectual property" most often includes patents, trademarks and copyrights, but can include technology transfer as well. Therefore, finding these web sites and bookmarking them for later retrieval is very helpful. Many sites include English translations or English versions of their web sites. There also exists a Japanese-to-english translation web site for Japanese patents.

Advantages and Consequences

When a thorough search has been conducted for the inventive concept, the client can be assured with nearly 100% likelihood that a patent will eventually issue. A well-searched inventive concept leads to a well-written patent application which, in turn, will speed the process of patent prosecution because unnecessary confusion by either the examiner or prosecuting agent/attorney, or both, will be avoided. This means that the background of the invention must clearly explain existing technology, what the need for the invention is and why the need exists, and, most importantly, what distinguishes the inventive concept from other "close" relevant documents. The last point requires that the search be sufficiently thorough to uncover the closest relevant documents so that the application writer can clearly explain the distinguishing features. This can only help the examiner who is typically overwhelmed with patent applications that have not been thoroughly searched before filing and, therefore, places the burden on the examiner to conduct a thorough search.

Because of time and production pressures on the examiner, if the application does eventually issue to a patent, there is a relatively high probability that an insufficient search has been conducted by the examiner. Based on the insufficient search (i.e., insufficient evidence on record), veteran examiners (i.e., examiners with some experience in their art area and knowledge of the historical progress of the art) may require from the agent/attorney to add unnecessary additional limitations to the claims before issuing the patent. The prosecuting agent/attorney will then be placed in the uncomfortable situation of having to decide (based on the insufficient evidence along with input from the inventor(s)) whether to opt to amend the claims, adding the limitations required by the examiner, or to appeal.

Both options have their negative and costly impacts to the inventor-client. In the first option, the inventor may learn later that the claims were unnecessarily narrowed, hopefully learning within 1 or 2 years, and may choose to file a reissue application. Moreover, the agent or attorney that amends to the satisfaction of the examiner may establish file estoppel that can cause substantial problems to the inventor later if the inventive concept defines a new technical niche that touches on many industries or creates a new technical field. In the second option, the prosecuting attorney may ultimately obtain a patent at great additional time and cost. Alternatively, the prosecuting attorney may reach the supreme court (which typically denies Petitions of Writ of Certiorari, i.e., it rarely considers appeals of the decisions of the Federal Circuit), exhausting all appeals, again at great time and expense.

On the other hand, when an application is filed that lacks sufficient detail or lacks information that may bear on patentability during prosecution, the client may decide to file a continuation-in-part, again at great time and expense. This can be avoided by including these additional details early, if possible. There are cases, of course, in which the additional details are discovered by the inventor after the application has been filed. In these cases, filing a continuation-in-part may be unavoidable.

Also, if a patent is issued that is based on insufficient evidence, i.e., lack of a thorough search, the patent may later be found invalid or fail under scrutiny when challenged by potential infringers. This might occur after a validity search by a competent searcher. When the patent holder cannot defend their patent when scrutinized or cannot enforce their patent publicly, the patent becomes merely a paper patent.

Conclusion

Therefore, a thorough search is almost a necessity, especially when the rate of issued patents is steadily increasing and the volume of information is increasing exponentially. An issued patent based on a thorough search is strengthened by the information it contains. The patentee will not need to augment the teachings of their patent when trying to defend under scrutiny. The searcher who is equipped to seek out the most relevant documents that exist directed to the inventive concept, is therefore the application writer’s, the prosecuting agent/attorney’s and, most importantly, the client’s best friend!

If the inventor is assured of the patentability of their inventive concept, i.e., because a thorough search was conducted from the very beginning, they may wish to pursue an infringement search in order to prepare for marketing and commercializing their invention. In this situation, each feature and each combination of features in the claims is searched thoroughly against claims of currently active (i.e., enforceable) patents, that is, both US patents and international patents that designate the US, that were issued less than 20 years ago. The inventor equipped with this information can decide where to obtain any necessary licenses or agreements to avoid conflict, thereby further strengthening their patent and improving the probability of success in the market.

This white paper is originally written by Francis J. Lorin,

and is free for non-fee distribution in any form or manner whether as-is or modified

FJL 6/23/2003