The Dolcera Blog

Full text patent searching helps in identifying the relevant patent records that would have otherwise eluded a non full text patent search. Let’s say that in a specific non full text patent search we obtain X number of relevant patent records. And if the same search were to be conducted considering the full text it is bound to yield Y number of relevant patent records. When Y is greater than X, the need to conduct a comprehensive full text patent search is reiterated.

On the contrary, if we were to consider the above search scenario from a data relevancy perspective, then it is only obvious to expect a higher relevancy rate in X than Y. Due to the low data relevancy prevailing in a full text patent search, it can be assumed that the associated time taken to analyze increases significantly. Subsequently, the cost associated with Y is significantly more than X. We believe that the choice between the two is completely determined from the business implication of the search and with the legal considerations with which the search is conducted. In other words, if there is strong business value in finding relevant un-licensed IP belonging to well known patent holders, then an exhaustive analysis if Y is warranted. However, if the goal is to conduct simple state of art search or validity search, where the principle of first-past-the-pole principle applies, then the marginal value of incremental hits with full text search is justified only if the set X does not provide sufficient evidence. Hence, the future of full text patent searching relies totally on the primary driving force i.e cost benefit analysis of the patent search. The cost benefit analysis has to be done in context of improved search tools and increasing sophistication of text mining tools available today.

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Professors Mark Lemley, Chris Cotropia, and Bhaven Sampat recently released a draft of their new article titled “Do Applicant Patent Citations Matter? Implications for the Presumption of Validity.” [Download Here.]

For the article, the trio analyzed the file histories of 1,500+ utility patents issued in 2007 and compared references used in office action rejections with the list of references cited on the patent cover-pages.  The objective was to figure-out the role of applicant-cited prior-art in the examination process.

Findings: Patent examiners rarely rely on applicant-submitted prior-art when making rejections.  Only 13% of the prior art used in office action rejections was applicant-submitted (despite the fact that 74% of cited references are applicant-submitted). Generally, the study found that examiners “effectively ignored” applicant-submitted prior art regardless of how few or how many references were cited; regardless of the timing of the IDS filing; and regardless of whether the submission included an EPO search reports identifying the references as “X-references.”

Implications: The authors suggest several implications of their findings: (1) That it likely does not make sense to find inequitable conduct when an applicant withholds prior art (since the art would not have been used in a rejection anyway); (2) That the presumption of validity associated with patents may be too strong; and (3) That studies based on patent citations likely lack merit.
There are several rational reasons for examiners to cite their own prior art. Because of the backlog, PCTs, and provisional applications, US examination often begins several years after the application was originally filed.  During that interim, many references become available that were not known at filing.  Thus, it is not surprising that applicants rarely cite 102(e) prior art, but examiners cite loads of it.  There is some reason to think that this “newer” prior art is probably better because of technological developments.  It may also be true that the applicant and examiner references are cited for different purposes — namely, applicants cite references that are generally relevant to the invention while examiners are looking for references that teach each particular element in the filed claims.  A third issue is that applicants tend to modify their claims during prosecution. That modification may make their originally cited art less relevant.

Conclusion: Most of the applicant cited references are ignored by the examiners. So, dont really trust on the citations.

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Oracle sued Google on its famous operating system ‘Android’. Oracle says Google infringed patents on its Java software platform while developing Android and also violated the copyrights owned for Java platform (including without limitation code, specifications, documentation and other materials) by Oracle.

The following is a brief background on this news and a summary along with patent numbers to digest.

Oracle acquired Sun Microsystems on January 27, 2010. Sun is now Oracle America, a subsidiary of Oracle. Oracle acquired the Java technology from Sun. Android competes with Java as “an operating system software platform for cellular telephones and other mobile devices” and that the Android stack employs Java apps running on a Java-based object oriented application framework and core libraries running on a “Dalvik” virtual machine that features just in time (JIT) compilation.
Android (including without limitation of the Dalvik virtual machine and the Android software development kit) and devices that operate Android infringe one or more claims of each of the following US patents.
US6125447A-Protection domains to provide security in a computer system
US6192476B1-Controlling access to a resource
US6192476B1-Method and apparatus for pre-processing and packaging class files
US7426720B1-System and method for dynamic preloading of classes through memory space cloning of a master run-time system process
USRE38104E1-Method and apparatus for resolving data references in generated code
US6910205B2-Interpreting functions utilizing a hybrid of virtual and native machine instructions
US6061520A-Method and system for performing static initialization

Source: Oracle Google Complaint

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Shall we say the era of complete information disclosure has just begun? and hence the importance of full text patent searching. This blog post is subsequent to our recent post where we cited a classic patent suit where the ‘test of enablement’ was exercised.
Under section US112, the test of enablement requires the claims to be backed by full disclosure of the preferred embodiment in the specification. This tactic has been used by lawyers extensively to invalidate patents in the courts of law.
Hence, as a commercial information service provider the provision of the full text data becomes extremely important to search and analyze since the import of the inventive step may not be fully available from the claims.
In other words, there is potent challenge to perform a thorough patent search given the commercial patent database providers providing just the thumb nail view of the first page. My random informal meetings with Dolcera’s analysts go on to concur on one simple fact that in order to understand the utility of an invention, it is highly advised that a patent search is done on the full specifications of the patent.  They believe that the title, abstract and claims typically make one to understand the novelty and non obviousness while most patents have their utility residing in the full specification.
Further, it is only prudent to have a thorough patent search involving full specifications of the patents where the purpose of patent search is for litigations involving invalidation / infringement and also while searching the prior art. Time and again, it has become a thumb rule for a patent searcher to understand that the patents are often written with a purpose to obscure the patented invention.  We believe that the above reiterates the need to search on the full text and hence the key for future patent searches.
Alternately, the patent dashboard’s new version allows searching the full text of the patent even with simple boolean operators. The search snippets provided beside the pdf documents of patents is where the searched keyword is highlighted on the full text.

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Test of enablement - “Any analysis of whether a particular claim is supported by the disclosure in an application requires a determination of whether that disclosure, when filed, contained sufficient information regarding the subject matter of the claims as to enable one skilled in the pertinent art to make and use the claimed invention.”  Source
I have always considered the CAFC judgments as one of the best repository to learn intellectual property. I happened to come across a very interesting case.
Janssen Enablement Alzheimers (pdf) - This case (relating to US Patent No. 4,663,318) goes to prove the necessity of writing very detailed specifications backed with strong experimental data for claims to be upheld in the court of law. In this case, Janssen claimed use of a certain drug ‘galanthamine’ for treating Alzheimers. At the time of submitting the patent for review, the inventor who later on licensed the granted patent to Jansen, did not have sufficient experimental data proving direct probable linkage to use of galanthamine for Alzheimers treatment. USPTO examiner also cited this point, yet issued the patent (this part is weird). Eventually, the claims of this patent were held invalid due to an ‘enablement’ clause - in simple terms, enablement here means the specification did not directly support the claims of the inventor.
The discussions were also adverting to the utility requirement which prevents mere ideas from being patented. As noted in Genentech, Inc. v. Novo Nordisk A/S, 108 F.3d 1361, 1366 (Fed. Cir. 1997), “[p]atent protection is granted in return for an enabling disclosure of an invention, not for vague intimations of general ideas that may or may not be workable.
Being an inventor myself, this case intrigues me that if we find a novel use for a patented compound, we can get a patent for it. From a business perspective, I feel that it would be prudent that pharmaceutical firms keep track of formulation patents/method of use patents filed by competitors over its own molecule portfolio. This is on the assumption that the competitors are trying to find novel uses of a compound patented by the inventing pharmaceutical firm. If successful, the competition would need to pay royalties to the patent holder of the novel compound (assuming the patent holder is willing to license it on fair terms).
For the patent searching fraternity, the hypothesis of determining patent quality based on disclosed experimental data is quite sound. However, it becomes difficult to retrieve if the experimental data paragraphs are added during the later stages of patent prosecution. The US PAIR information workaround to access the office actions will be of little help especially if the number of patents to be examined is large.

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While BP and the government are still floundering in dealing with the catastrophe, we think that a certain look at the patent landscape might guide Mr. Tony Hayword, CEO - BP with a promising business strategy for the future. More often than not, the business decisions involving the patent due diligence / strategic IP kind have had a desired effect on the final outcome.

In addition to the $20 Billion fund dedicated to oil spills, it would also be prudent to look at the intellectual property of companies with deep sea oil capping technology. The immediate steps could also dwelve into mapping its own patent portfolio for potential synergy.

The following graphs shows the top patents assignees companies holding relevant patents of interest to BP at this juncture to seek deep sea oil capping technologies and one of them could be a potential target for BP to acquire or to in-license.

Top IPC Classes with their definitions

Note: The above IP analysis is only a sample derived from the respective IPC classes and we have withheld the comprehensive data for data security purposes. Please contact us for more information while we will be glad to help you.

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SAN MATEO, Calif.–(BUSINESS WIRE)–Dolcera Corporation, a leading information services and technology firm that helps companies quickly and effectively navigate through their entire innovation cycle to achieve successful business outcomes, today announced its new Patent Dashboard, available for the first time as a standalone platform.

Dolcera’s flagship software as a service (SaaS) Patent Dashboard is a proprietary Web 2.0-based collaborative tool that enables companies to visualize, search, and map the relevant competitive patent landscape, determine patent value, and ultimately accelerate the time to commercialize their patents. The new Patent Dashboard v1.1 provides greater flexibility and control as well as enhanced search and reporting capabilities.

Mapping the Patent Landscape

Today, patents are under greater scrutiny, take longer to be approved, and can cost several hundred thousands of dollars from application until grant stage. At the same time, patents represent new sources of revenue through commercialization or acquisition, and are also viewed as points of differentiation and competitive advantage.

The Patent Dashboard’s ease of use and flexibility, along with its collaboration capabilities, make it easy and practical for experts and non-experts to use. It may also be used alone or with other patent tools, such as those for search, intellectual asset management, or research.

Among the new features of the Dolcera Patent Dashboard Tool v1.1 are:

• Custom Taxonomies and Patent Additions by users on the fly, based on their topics of interest;
• Editable Patent Categories that can be easily moved within the Dashboard;
• Enhanced Researching and Reporting, with patent searches (even complex Boolean ones) and information filters; and
• Enhanced Collaboration via relevance rankings, referral tagging, track changes, and data security for selective user access.

The Dolcera Patent Dashboard is sold directly; a single full and functional user license starts from $49 per user per month.

About Dolcera

Dolcera is a leading information services and technology firm that helps companies quickly and effectively navigate through their entire innovation cycle to achieve successful business outcomes. The company’s mission is to deliver high-quality Intellectual Property (IP), technology, and market research services that can be deployed easily and quickly within a company or department. Dolcera’s products and services are used by Fortune 500 and Global 1000 organizations across a wide array of industries including alternative energy, biotechnology, chemicals, oil and gas, consumer goods, food and beverages, manufacturing, medical devices, pharmaceuticals, semiconductors, software and telecommunications. The company is privately held and based in San Mateo, Calif. and Hyderabad, India. For a demo of the Patent Dashboard, please see: YouTube Link.

For more information, please visit: www.dolcera.com

Dolcera and Dolcera Patent Dashboard are trademarks of Dolcera Corporation. All other products and services mentioned herein are trademarks of their respective companies.

Contacts

Creekside Communications
JoAnn Johnston, 650-322-6245
joann@creekside-communications.com
or
Dolcera Corporation
Manikandan B., 650-269-7952
manikandan.b@dolcera.com

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“Is it a bird, is it a plane…” What is the Dolcera dashboard and how does it fit into the constellation of other patent products? Three types of patent applications have been available to IP professionals over the years:

1. Patent search engines: In this category, we have the Thomson tools (Micropatent, Delphion, Thomson Innovation), Questel, Lexis-Nexis, Google Patents, and the patent office’s own search tools (USPTO’s search engine, eSpaceNet, etc.).
2. Patent analytics tools: In this category, we have the desktop tools (VantagePoint, for example), and the online tools such as Aureka, Innography, and PatentInsight Pro.
3. Intellectual asset management systems: In this category, we have FoundationIP, IPMaster, Anaqua, and many others.

Patent professionals and other patent-aware professionals (inventors, scientists, business development/licensing managers) need tools for the following tasks:

1. Search: Conducting patent searches on patent databases around the world.
2. Categorization: Organize patent data (one’s own patents or competitors’ patents or those of a potential acquisition) into categories and groups that can be used for easy access to patent information.
3. Analysis: Analyzing large quantities of patent information to understand trends and to make business decisions.
4. Sharing/Presentation: Share “raw” patent data and the analysis with large teams of people.
5. Collaboration: Obtaining feedback from other stakeholders in the organization, or from partners and collaborators (outside counsel, for example) on the patent data.
6. Docketing: Tracking one’s own portfolio through the prosecution process and beyond.

The existing products do a good job of search, analysis, and docketing processes. While categorization, sharing/presentation, and collaboration are equally important aspects of the patent world, they are underserved by the tools described above. Enter the Dolcera dashboard. The dashboard focuses on the three tasks: patent categorization, patent sharing/presentation, and collaboration. With the dashboard, these three tasks are a breeze: you can take your patent sets and categories, organize patents into the categories, share the results with an interactive presentation platform, and collaborate with your colleagues easily. The dashboard is the Facebook of patents, and not the Google search engine. Dolcera also provides high quality patent search and analysis services as well, using some of the excellent search tools described above, as well as using some of our internal proprietary technologies.

Ranking makes life easier. Be it top 10 companies, top 10 universities to study technology or to choose amongst top 10 sci-fi movies you want to watch on the weekends; ranking allow us to choose the best amongst the available. Time saver, decision influencer and extremely helpful are the ranked material.

At Dolcera, we thought of applying the ranking methodology to patents. We have ranked patents based on a variety of parameters. First factor amongst all remains the client focus, second, sufficiency of disclosed information in patents and third credibility of a patent to perform the same process/art with higher efficiency than any other patent with similar focus.

Let us consider an example, the first table in the image below show patents with similar focus of decreasing tumor volume using RNA interference (RNAi). The patent one has disclosed maximum information in this area and in addition to the desired data, it has also published a lot more supporting information derived from other experiments. Further, as the rank goes down the percentage decrease in tumor volume decreases. Some may argue that patent 2 has disclosed more decrease in tumor volume than patent 1 but then patent 1 has disclosed more supporting data, taking its overall weighted score higher. Of course, if the client is still interested only in comparing tumor volume, patent at rank 2 will come at rank 1. Hence the ranking is customized to suit the client requirements.

The ranking of patents is not that simple as it may sound. The analysis team has to encounter challenges and figure out the ways to overcome them. Graphs, charts, instrumental outputs etc. will not give you data in percentages which can be just copy-pasted to compare. They have to be calculated first using mathematical tools which may vary from calculating areas under the graphs or applying differentiation & integration on instrumental outputs, to allow the reader to compare results before making the final decision. It’s considered an absolute value add to the decision making process by the clients who have sought such a service from us.

Not all experimental data will be quantitative. For people familiar with biotechnology would know that there are experiments (such as gel electrophoresis, staining etc.) that give qualitative or quasi-quantitative results. I am sure, the same will hold true with other technology fields too. Second part of the figure above summarizes few patents which can not be ranked as there is no data yield from such experiments and hence comparison is not possible. But then why miss them? We provide a Dolcera summary table which will give reader an idea as these experiments were atleast conducted and disclosed in patents. This comparison will thus strengthen the decision to be taken from ranking matrices discussed above.

This systemic approach of collecting, sorting, analyzing, and finally ranking the data has the following advantages:

1. Saves time!
2. Easy comparative analysis.
3. Helps in competitive watch
4. Decision on in-and-out licensing can be made.
5. Strong baseline for future scientific investigations.

Who will be benefited?

Scientific community: Extensive experimental data, comparison matrix of data from different patents with same focus is a feast to researchers and scientists as it helps them to choose best technologies.

Patent attorneys: Allows competitor watch, supports their decision on in and out licensing.

Venture capitalists / investors: Patent ranking based on disclosed information helps investors to decide patents to further invest upon.

Which technology fields are covered?

Patents in all the technological fields can be ranked. You just need to tell us the focus area and we will rank the patents for you. The ranking and weighing scores can be customized to suit user’s requirements.

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