aall-pll intellectual property sub-group presents: patent research 101, part 1 presented by kristin...
TRANSCRIPT
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”
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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.
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Application DataExample from Granted US Patent US 7,541,107 B2
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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
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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
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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://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: [email protected]: @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 ([email protected]; 617-368-2102) with questions/comments.