The Dolcera Blog

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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The American Civil Liberties Union (ACLU) had sued Myriad for licensing a couple of gene sequences related to breast cancer — BRCA1 and BRCA2. The judge came back today and ruled that human gene sequences in and of themselves are not patentable subject matter, and thus the patents are invalid. This case will now make its way to the CAFC (the US Court of Appeals of the Federal Circuit), and then on to the Supreme Court.This could be a landmark change. Diamond v. Chakrabarty started the gene patent story, and the Myriad ruling could be a major chapter in it. The smart money is not on ACLU’s side yet, but things could change in the next year or two.With the Bilski decision due any day (could come as soon as the day after tomorrow), we are in for some interesting times in the patenting world.

“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.