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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Patent rights can be lost if:

• Fees required to keep the patent in force (maintenance fees) aren’t paid
• It can be proved that the patent doesn’t
  • adequately explain how to make and use the invention
  • improperly describes the invention or
  • contains claims that are inadequate

• One or more earlier patents or other publications (prior-art references) are uncovered which show that the invention wasn’t new or wasn’t different enough to qualify for patent rights
• The patent owner engages in certain defined types of illegal conduct, that is, commits antitrust or other violations connected with the patent, or
• The patent applicant committed “fraud on the Patent and Trademark Office (PTO)” by failing to disclose material information, such as relevant prior-art references, to the PTO during the period when the patent application was pending.

In short, the patent monopoly, while powerful, may be defeated and is limited in scope and time.

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