AALL-PLL Intellectual Property Sub-Group Presents: Patent Research 101, Part 1 Presented by Kristin...

AALL-PLL Intellectual Property Sub-Group Presents:

Patent Research 101,Part 1

Presented by Kristin Whitman, LandonIPHosted by Emily Florio, PLL-IP co-chair

Part of the AALL PLL-SIS Webinar Series 2012-2013Presented June 12, 2013

Speaker Bio

• Kristin Whitman is a reference librarian with Landon IP, a private patent research firm, and was one of the founding members of Intellogist (www.Intellogist.com), a free patent searching resource and community. She now serves as a librarian on Landon IP’s internal Reference Desk, promoting knowledge capture and knowledge sharing within the organization. She is a regular contributor to the Intellogist Blog (http://intellogist.wordpress.com/), which provides weekly posts about patent search systems and their features.

• Contact information at the end of this presentation.

Agenda

Why perform patent research?The challenges of patent metadataDiscuss machine translationsDetermine the status of a patent

Why Perform Patent Research?

A very short overview of the major patent search types.

Why Perform Patent Research?

• Patentability Search– Is the invention novel? Non-obvious?– What other material is out there?

• Freedom to Operate/Infringement– Will I get sued for selling my product?– Is someone else infringing on my rights?

• Validity– Is my competitor’s patent legally enforceable? Did

the patent examiner miss something?

Why Perform Patent Research?

• Patent landscaping– Performing high-level analysis on large datasets– Involves careful data cleaning and filtering– Usually includes charts, graphs, maps and other

visual aids.• Patent landscaping supports business

intelligence– Research and development opportunities– Mergers and acquisitions

Agenda

Defining a patentThe challenges of patent metadataDiscuss machine translationsDetermine the status of a patent

Patents Dissected

Bibliographic Data and Text Fields

Topics

• Patent Number Basics• Bibliographic Standards• Types of Data On the Patent Face• Numbers and Dates In-Depth• Patent Families• Retrieving Patent Information from the Web

Patent Numbers: Country Codes

• Every country has their own patent system.• Every patent number begins with a two-letter

“country code.”• The country code indicates what country or

regional authority issued the document.– Examples:– US – United States– JP - Japan– FR – France

Country Codes

• Sometimes the country codes derive from the native language name of the country, e.g. “Deutschland” for Germany. – Examples:– DE – Germany– GB – UK (Great Britain)– CH – Switzerland– HR - Croatia

Publication Numbers

• Patents are identified by “publication numbers”• Challenges:

– Each country has a different numbering format– Applications and granted patents also have different

numbering (in most countries).• Examples:

– US 7,541,107 (B2)– US 2005/031930 (A1)– EP 1296389 (A2)– JP 2003100317 (A)

Publication Numbers

• Most database systems make you remove the punctuation, or the search won’t execute

– A granted patent is written US 7,721,889 (B2)– Search systems want US7721889

Kind Codes

• Every patent publication number is followed by a one or two character “kind code.”– US 7,721,889 B2

• A kind code can be a single letter, or a letter followed by a number, e.g. “A,” “A1” “B2”

• The kind codes indicate the publication stage, where it is in the patenting process.– Published patent applications aren’t deleted when

granted patents issue! They remain in the db.

Kind Codes

• The beginning letter is the most important– If it is followed by a number, that usually indicates

some secondary information• The typical meanings of kind code letters:

– A – first published (usually published apps)– B or C – granted patents– U – utility models (short-term patents)– S – design patents

Kind Codes

Challenges• The meaning of kind code differs by country

– Up until 2001, US granted patents had kind code “A”

• It can also differ based on year of issuance– After 2001, US grants now have B kind codes

Topics

• Patent Number Basics• Bibliographic Standards• Types of Data On the Patent Face• Numbers and Dates In-Depth• Patent Families• Retrieving Patent Information from the Web

World Intellectual Property Organization (WIPO) Standards

WIPO creates standards that control the format of bibliographic data on patent documents.– Most patent authorities follow these standards

Two-digit "INID" codes in parentheses appear next to each data element on a patent face.

– e.g (22) denotes "application date"

See Further: Handbook on Industrial Property Information and Documentation, WIPO ST.9 www.wipo.int/standards/en/pdf/03-09-01.pdf

WIPO Codes and Non-US Docs

The WIPO 2-digit codes can help you make sense of non-English documents.

On the next two slides, you'll see:- A US patent document with INID codes- A Japanese (JP) patent doc with INID codes

Both have application date fields labeled (22)

Topics

• Patent Number Basics• Bibliographic Standards• Types of Data On the Patent Face• Numbers and Dates In-Depth• Patent Families• Retrieving Patent Information from the Web

Inventor vs Assignee/Applicant

• Inventor - individual or group of individuals who created the invention.– Can be multiple inventors– Never changes

• Assignee - individual or corporation. Legal owner who has the right to assert the patent.– Changes when the patent changes hands– Change in ownership not reflected on the patent face!

Patent is not re-published to reflect change.– Outside of the US, the assignee is called the "applicant."

Names (and Addresses)Example from Granted US Patent US 7,541,107 B2

Patent ClassificationsInternational Classification (IPC)

-All major authorities are required to use IPCs

National Classification Systems:- US system & European (ECLA) system

– being phased out in favor of CPC- Japanese (F-term and File Index) systems

Cooperative Patent Classification (CPC)-Created to harmonize the US and European systems, in use as of Jan 1, 2013

Patent ClassificationsExample from Granted US Patent US 7,541,107 B2

Example below includes IPC and US classes

Citations (“References Cited”)

Patent applicants are required to disclose any known material which might relate to the patentability of their invention

These citations are published on the patent face • Citations to other related patents• Citations to related “non-patent literature”

1111111111111111

Patent and Non-Patent CitationsExample from Granted US Patent US 7,541,107 B2

Abstract and Representative Img.Example from Granted US Patent US 7,541,107 B2

Patent Sections

• Title• Abstract• Drawings

– Drawing pages appear directly after the first page

• Descriptiono Background of Inventiono Drawing Descriptionso Exampleso Note: the description is sometimes called the patent

“specification.”

Patent Sections: Claims

• Claims– The legally enforceable part of a patent.

• When reading claims, remember:– Language in claims has specific legal meaning– Only an attorney can correctly interpret claims.

Misunderstandings about Patents

• Published Application US 2009/0244009 A1• Title: TABLET COMPUTER• Abstract: A tablet computer is composed of a

tablet component and a keyboard component. The tablet component houses all the essential hardware…

• This person really thinks they can patent a tablet computer??

Misunderstandings about Patents

• Read the claimsClaim 1:

A tablet computer comprising… a counterbalance armature attached to the keyboard component that extends from the keyboard component to oppose a moment of inertia of the tablet computer…

Topics

• Patent Number Basics• Bibliographic Standards• Types of Data On the Patent Face• Numbers and Dates In-Depth• Patent Families• Retrieving Patent Information from the Web

Numbers and Dates

• Publication Number and Date• Filing or Application Number and Date• Continuity Information:

• “Related US application data” • Priority Number and Date

Publication Data

A publication date on a published application is the date of availability to the public.

A publication date on a granted patent indicates the date that the patent was issued.

- On the face of the granted patent, it will be called "date of patent."- In an electronic database, it will be called a "publication date"

Publication Date on Granted Patent

• “Date of Patent” is called “publication date” in electronic databases

Filing/Application Data

A "filing date" or "application date" is when the paperwork was filed at the patent office.-In the US it's called a "filing date"-In other sources it may be "application date"

An application number is an ID number, assigned

at the time of filing, that identifies the (unpublished) application.

1111111111111111

Application DataExample from Granted US Patent US 7,541,107 B2

1111111111111111

Related US Application Data:Continuation

• Continuation – A new application filed as a “sister” application to

the first– Applicant wants to re-draft the claims of their

original application (but no new inventive material)

– The original filing date is the “priority date” for the continuation.

Note that I am not an attorney and this is not legal advice.

Continuation – Same invention, revised claims

July 31, 2002

Application 10/208,294

Grant US 6,893,764

Grant US 7,541,107Aug 19, 2004July 31, 2002

Application 10/921,628

Both patents have legal protection back to the “priority date” of July 31, 2002

Continuation ExampleExample from Granted US Patent US 7,541,107 B2

1111111111111111

Related US Application Data

• Continuation-in-part – Applicant has new improvements to the invention– Old material protected back to the original filing

date– New material only protected back to continuation-

in-part filing date

Note that I am not an attorney and this is not legal advice.

Continuation in part – New inventive material; multiple priority dates introduced

Oct 1, 2001

Application 09/914,046

Grant US 7,479,276

Grant US 7,780,882Apr 2, 2002Oct 1, 2001

Application 10/113,927

The original material has priority to Oct 1, 2001; the new inventive material only claims priority back to Apr 2, 2002

Continuation-in-part ExampleUS 7,780,882

1111111111111111

The Importance of "Priority“: International Filings

• Applicants can also file internationally, creating sister patents in other countries

• The concept of priority data binds international patent docs together – Again, the “priority” data is from the first

application in the chain• Electronic databases can use priority data to

link related international patents together.

Topics

• Patent Number Basics• Bibliographic Standards• Types of Data On the Patent Face• Numbers and Dates In-Depth• Patent Families• Retrieving Patent Information from the Web

Review

• Each nation has its own patenting system.

• Each national patent is only legally enforceable in the country of issuance.

• When you find a US patent, it is likely that there are related patents in other countries.

Example of a Patent Family

Patent families include related patents from all over the world

Germany, Bulgaria, Italy, France, Poland, Hungary, Austria, Cuba, Mongolia…

Patent Family Types

Simple Patent Families

• Some family types are small and exclusive, and all documents are very closely related

• Simple families mean all documents must share exactly the same priority data

• Branches that have separate priorities (e.g. from continuations-in-part) will fall off

Each blue box represents a published document

Inpadoc/Extended Families

• Some patent families are broad and inclusive • These families will contain "branches" off of the

original application • This approach brings in distantly related inventive

material • The common broad family type is an called

"Inpadoc" or "extended" family– each document must share a priority with at least

one other doc in the family

Retrieving Patent Families is Essential

Takeaway:• If someone asks you to retrieve a patent, you

should research and provide patent family data.

Recommended Sources

• There are many examples of small family files, many specific to certain for-pay search products.

• Inpadoc extended family data is widely available in free products– Espacenet, a free search service from the

European Patent Office, is one major source– http://worldwide.espacenet.com

EPO Free Patent Search Engine

Espacenet Family Search

Use the Smart Search box to enter your number

Espacenet Family Search

Find your patent & click “Inpadoc patent family”

Espacenet Family Search

Result: list of Inpadoc family members

Finding the Patent PDF

Find your patent & click “Original Document”

Finding the Patent PDF

Agenda

Why perform patent research?The challenges of patent metadataDiscuss machine translationsDetermine the status of a patent

Machine Translations

Challenges

• If you find a non-English patent, you may be asked to find a machine translationo English family members are not always presento Hand translations are expensive; MTs are a good first step

• Machine translation technology is still evolvingo General translation engines can't handle sci/tech

vocabulary wello Certain language pairs are less developed (for example,

Finnish to English)

Tools/Sources

• Some national patent offices provide English MTs - Japan, Korea, WIPO's Patentscope

• Commercial systems load pre-translated collections o Can be searched with English keywords

• Questel's Orbit.com and LexisNexis TotalPatent both contain over 20 full text pre-translated collections

• Regional authorities have multiple official languageso EPO: English, French and Germano WIPO: 8 official languages, including both latin and non-

latin character sets

Agenda

Why perform patent research?The challenges of patent metadataDiscuss machine translationsDetermine the status of a patent

Post-Grant Events

• Maintenance fee payments due – is the patent expired due to non-payment?

• http://portal.uspto.gov/external/portal/pair/• Legal status on Espacenet

• Re-assignments – who really owns the patent?• http://assignments.uspto.gov/assignments/?db=pat

• Litigation – who is getting sued?– Search federal district court dockets, not patent

offices!• PACER http://www.pacer.gov• CourtLink and Westlaw

America Invents Act

• This Act passed in late 2011o System changed from "first-to-invent" to "first-to-file."

Inventors granted one-year grace period from public disclosure to filing

o Curtailment of "patent trolls," those who litigate using patents they have purchased from others A "troll," or "non-practicing entity," owns IP but does not make

any product related to that IP The law restricts new patent suits to be filed against one

company at a time, eliminating the shotgun approach This makes it more costly to file litigation

For More Information

http://www.lexisnexis.com/community/patentlaw/

For More Information

http://www.intellogist.com/wiki/Main_Page

For More Information

http://intellogist.wordpress.com/

For More Information

http://www.piug.org/

For More Information

http://www.tms.org/pubs/journals/JOM/matters/matters-9609.html

For More Information

http://www.governmentinfopro.com/

https://www.facebook.com/#!/LexisNexisforGovernment

Questions?

Kristin WhitmanLibrarianLANDON IP1725 Jamieson AvenueAlexandria, Virginia 22314 USADirect: +1 703-682-4849Email: kwhitman@landon-ip.comTwitter: @IPLibrarian

Thank You!Patent Research 101, part 2: Wednesday June 19th

*Recordings of both parts will be made available on the PLL-SIS IP website within the week.

Private Law Libraries SIShttp://www.aallnet.org/sis/pllsis/

IP Subgroup- Looking for volunteers!http://www.aallnet.org/sis/pllsis/Groups/ip.asp

Contact Emily Florio (florio@fr.com; 617-368-2102) with questions/comments.