The Dolcera Blog

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H.R.5980 is a bill introduced on July 29, 2010 by US government. The Bill proposes the exclusion of claims and full text specification for the pending applications i.e until the patent application gets granted you cannot view the claims. USPTO will only publish abstracts for the publications or pending applications and no claims will be published. This change may impact the ability to monitor competitors’ pending applications.

See Sec-C in the bill(H.R.5980).
Also read here for more information.

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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 a certain number of relevant patent records. And if the same search were to be conducted considering the full text, it is likely to yield more relevant patent records than what was obtained without the full text. The comprehensiveness of the patent search is enhanced when the scope includes the full text of the patents searched.

On the contrary, if we were to consider the above search scenario from a data relevancy ratio perspective, then it is only obvious to expect a lower relevancy rate in latter’s scope than in the former. 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 a full text search is significantly more than a search without it. 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 involving the full text in the scope of search 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 search result set searched without the full text 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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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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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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