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Patent Strategies in Light of the New Rules September 21, 2008

Posted by mais in claim analysis, India, IPM Strategies, patent intelligence, USA.
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Courtsy Russ Krajec’s Anything Under The Sun Made By Man

In Patent Drafting and Claim Writing, Patent Drafting Theory, Practical Tips for Patent Drafting, Patent Strategy, Patents in Business, Business Theory for Patents, The USPTO

The latest rules from the US Patent and Trademark Office are quite sweeping.  The new rules have several facets.  On one hand, the PTO is limiting the number of continuation and continuation in part applications, as well as requests for continued examination (RCE).  On the other hand, the PTO is limiting the number of claims you can have by forcing the applicant to file an Examination Support Document if you exceed the claims.

Another twist is that the Examination Support Document may be forced where two applications are filed nearly simultaneously.  The PTO may assume that they cover the same patentable material and force an Examination Support Document unless you can prove that the applications do not cover the same material.

(As a side note, I have spoken to several patent attorneys/agents about the new rules and I have not yet found one who would even agree to write an ESD, no matter what the cost.  The reasoning is similar to why I will not file accelerated examinations.)

Each of the various requirements put on the applicant presents several problems, including the specter of patent invalidity and possibly inequitable conduct if the various support documents and petitions are not properly done.

In some situations, I used to espouse a kitchen sink approach to patent prosecution, where you load up a patent application with as many ideas as possible, get an early filing date, and file many continuation applications as possible.  This strategy can blanket an area of technology very effectively and makes the best use of early disclosure.  The strategy also could be used to tailor claims to an infringer so that lengthy and costly court battles may be averted entirely.

In view of the new rules, I think another strategy may be better suited.

This strategy is very targeted and narrow, and looks to find specific areas that may be infringed in the future, but does not include any more than it needs.

The targeted strategy is driven from the need to avoid overlapping applications and avoid the potential that a continuation application may need to be filed.

The steps are as follows:

1.  Define a very specific strategy for patent coverage over the entire scope of the technology you wish to cover.  The strategy must be driven by the current and potential business needs of the client, as well as the possible turns a technology may take.

2.  Draft a complete set of claims for each targeted area.  Each element of the claims should be carefully and thoughtfully considered for the language, the scope of coverage, any way the claims may be construed or misconstrued, how an infringer may infringe, and for how it differentiates from the known prior art.

3.  Only after the claims are completed, analyze the claims with the inventor and the business manager, reviewing the areas described in step 2.

4.  Draft a specification that addresses each and every claim and every feature of every claim, and avoid any additional material if at all possible.  Each feature must be described completely, but avoid adding other ideas that may be patentably distinct and that you may wished were a stand-alone patent.

One interesting twist to the new rules is to attempt wherever possible to force a restriction by including patentably distinct sets of claims.  Each divisional application is a separate family of applications for the purposes of continuation applications and RCEs.

The new rules may tend to force less disclosure and much more tailored specifications that may stand or fall on the first couple Office actions, rather than specifications with all sorts of material that may keep an application alive through several continuations.  This may lead applicants to perform good searches based on the claim set of step 2 prior to drafting the specification of step 4.

The net result is a shift from large, comprehensive patents that may disclose a broad range of concepts to those which are very narrow and even skeletal.  Instead of ‘promoting the progress’ by encouraging as much disclosure as early as possible, I think the new rules encourage the exact opposite.

This discussion is by nature very broad and sweeping, but based on the strategies that the new rules seem to favor.  I am sure that many situations may cause other strategies to be used within the new rules, and I will discuss them as they come up.

Types of Patent Searches April 26, 2008

Posted by mais in Patent, patent intelligence, patent searches.
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A nice brief compilation by Vinod Kumar Singh of Competitive and Technical Intelligence Toolbox (CTIB)

Search Type

Purpose

Coverage

Comments

  • State-of-the-Art

Identify general and background art for a particular technology

Patents and non-patent literature. Not exhaustive.

Gives a broad picture to help guide research

  • Patentability, Novelty

Identify art which may affect the patentability of an invention

Patents and non-patent literature. Multiple data sources.

Narrower in scope than State-of-Art. Recommended before writing patent application

  • Invalidity, Opposition

Identify prior art which may impact the claims of a specific patent

Patents and non-patent literature. Employ creative strategies to elucidate previously undiscovered art before filing date of patent.

Helps remove blocking patents by anticipating claims of an invention. Establishes solidity of patent portfolio, e.g. for licensing or company acquisition

  • Infringement, Freedom-to-Operate, Right-to-Use, Domination

Identify patents or applications which may cover a proposed product or process

Covers patents only and which are still in force. Include both narrow and broad concepts

Often country specific. Analysis of claims.

  • Patent Watch

Monitor new patent activity or status changes to existing patents

Patents only

Updates at regular intervals or rapid-alerting when activity occurs

  • Technology Update

Monitor latest technology developments by subject

Patents and/or non-patent literature

Regular updates, weekly, monthly or other chosen frequency

  • Non-Patent Literature Reference Query; Biomedical Information

Research into specific questions asked by biomedical staff regarding safety, clinical, regulatory areas, or by Research Scientists, etc.

Biomedical databases or other databases as appropriate

A quick turnaround on these types of searches can normally be accommodated

  • Inventor, Author or Assignee

Identify references to a particular inventor, author, assignee or affiliate

Patents and/or non-patent literature

A quick turnaround on these types of searches can normally be accommodated

  • Legal Status

Determine whether a patent is in force, abandoned, etc.

Specialist legal status online databases (e.g. ‘INPADOC’) and/or patent office registers

A quick turnaround on these types of searches can normally be accommodated

  • Patent Family

Identify the first or ‘basic’ patent and subsequent ones claiming the same priority

Patent databases such as ‘World Patents Index’, ‘INPADOC’ and ‘Chemical Abstracts’

A quick turnaround on these types of searches can normally be accommodated

  • Cited or Citing References

Identify references

Patent databases, e.g. ‘Derwent Patents Citation Index’ and non-patent literature, e.g. Science Citation Index

An alternative method useful in identifying additional state-of-the-art or invalidating prior art

  • Collections

‘Collect’ prior art in a particular area of technology

Patents only. Often conducted within selected patent classifications

Useful for directing research or identifying gaps for patenting strategies

  • Patent Map

Show patent landscape to uncover trends, gaps or overlap in patent coverage and links between patents

Patents only

Useful for directing research or identifying gaps for patenting strategies

  • Scientific Business

Identify financial, organizational, statistical, commercial and other information for technology based organizations

Business, news and other sources

Supply of raw data and/or overall analysis

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Patently Obvious: MBHB Patent Law Blog: Patent Explosion August 3, 2004

Posted by mais in IP/Patent Valuation, Patent Analytics, patent intelligence.
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Patently Obvious: MBHB Patent Law Blog: Patent Explosion: “Aug 02, 2004
Patent Explosion
The past twenty years has seen increadible increases in the number of patents both applied for and issued. In her most recent paper (PDF), Berkeley professor and empirical whiz, Bronwyn Hall, examines patenting data and arrives at some interesting conclusions.
1) Although patenting has increased in most technological fields, the explosive growth is largely accounted for by electrical and computing fields.
2) The explosion is drivin, for the most part, by U.S. firms, with some contribution from Asia and Europe.
3) Patenting has become a critical signal of viability for new entrants in many industries.
Professor Hall’s data shows that in most industries, increases in patenting were drivin by new entrants. However, patenting increases in electrical and computing industries were accomplished by a shift in patenting by industry stalwarts.
The figures reveal the following interesting fact: although the jump in patent applications within the U.S. occurred in all technology classes, when we look by broad industry class, we find that it occurred only in firms that are in the electrical, computing and instruments industries. That is, the increase in chemicals, mechanical and other technologies appears to have been driven by increasing patenting activity by firms that were not traditionally in these industries. This result is consistent with the view that there has been a major strategic shift in patenting in the electrical/computing industries, but not in other industries.
UPDATE: Professor Hall provided a correction to my original interpretation of her results. She interprets her results as showing ‘that patents held by new entrants in the electrical and computing industries became more valuable post-1985 than those”