Breathing Life into a Prior Art Search

Breathing Life into a Prior Art Search

One valuable reason for hiring a specialized search firm such as SPSG is our ability to breathe life into a search. Many times, a search scope contains terms that cross technologies and return literature that is outside the scope search even though the reference technically contains the search terms. This is why simple tools that use basic terms and generically search for documents containing those terms in any proximity and any field rarely provides the comprehensive view of prior art a client needs. To return only the most relevant prior art, the searcher must have the creativity, knowledge, and specialized tools to hone the search scope in such a way to unearth the most relevant prior art.

At SPSG, we have a variety of ways to ensure that the search returns quality prior art. For searching patents, we use an upper level search tool, PatBase. This comprehensive patent database allows for sophisticated search strings that focus on individual fields of patents, such as titles, abstracts, and claims, in addition to searching the full text of patents. By alternating searches between these fields, the searcher is capable of focusing and broadening the search more efficiently than when using a public or simplistic tool. For example, in the simplistic search for an online store, the search was limited to just the title, abstract, and claims and a proximity of 5 was used to ensure the terms was within the same sentence. More than 25,000 results were not surprisingly returned, but had we searched full text, over 90,000 results would have been returned.

pic 1

Moreover, PatBase enables highly customizable views of the search results, including abstracts, classifications, complete families, and figures, allowing for easily identifying which results to analyze more in-depth.

pic 2

In viewing the results, we are able to customize highlighting of both individual terms and also search phrases consisting of terms within proximity of other terms, so that the highlighting provides more context in the patent.

pic 3

Additionally, SPSG often uses classification for limiting search results to the most relevant groups of patents. In this vein, PatBase provides an “Optimize” feature that narrows the search based on technology even before knowing which classes are most important. This allows the searcher to reduce over a thousand results to a couple hundred manageable results in the right technology in minimal time. For example, in the online store search, 5% of results were medical or veterinary science. Therefore, the search was optimized to exclude unrelated technologies except those in the field of computing; calculating; counting, which reduced the results and eliminated many unrelated technologies.

pic 4

These techniques breathe life into a search for quicker return of more relevant patents. This efficiency provides a significant advantage to our clients through less time spent on the search and thus lower-cost searches. More importantly, SPSG provides a highly-accurate patent search by fully utilizing our search tools. For more information, please feel free to contact our offices at 626-432-7292 or email me at stacia.stokes@shermanpatentsearch.com.

cropped-sherman1.jpg

Quicker Patent Allowance through Accelerated Examination

As of May 2015, the USPTO has a backlog of 579,221 unexamined patent applications. The time to first office action takes on average 18.1 months. Total pendency until allowance stretches to 26.7 months after filing. If an appeal becomes necessary, the time from filing to Board Decision is an unfathomable 87.5 months. Applications filed with requests for Accelerated Examination, however, boast a mere 12 months from filing to final disposition. Unlike Track One Prioritized Examination, which also has a 12-month pendency goal but requires a significantly high fee of $4140, Accelerated Examination merely requires a $140 undiscounted fee, a Pre-Examination Search Document, and Examination Support document distinguishing any prior art found in the search.

To qualify for Accelerated Examination, the applicant must conduct a thorough prior art search and submit a Pre-Examination Search Document having several specific elements. According to the USPTO Sample Pre-Examination Search Document, these elements include the classes and subclasses searched, databases searched, identification of database services used, search logic, and identification of non-patent literature sources searched. At SPSG, we have substantial expertise with Accelerated Examination. Through years of experience, we know precisely what the USPTO is looking for in the AE support documents.

The SPSG team provides its clients with a thorough report containing well-organized sections identifying at least (1) the scope of the search; (2) project notes identifying overarching opinions about the search as a whole; (3) a summary of each reference with relevant portions of the reference copied into the report and most important points highlighted; and (4) search history including classes and subclasses searched, databases and NPL sources searched, issuing authorities searched, and search logic consisting of specific search strings input into the databases. By clearly and concisely presenting clients with this level of detail in the final search report, SPSG greatly simplifies the process of completing the Pre-Examination Search Document and Examination Support Document to request accelerated examination.

For more information, please feel free to contact our offices at 626-432-7292 or email me at stacia.stokes@shermanpatentsearch.com.

Author: Stacia Stokes, J.D.
Patent Search Associate

Commil v. Cisco and the Significance of High Quality Freedom to Operate and Invalidity Searches

Recently, the Supreme Court held “[a] defendant’s [incorrect] belief regarding patent validity is not a defense to an induced infringement claim.” Commil v. Cisco (May 26, 2015). Thus, freedom to operate and invalidity searches are more important than ever. A thorough freedom to operate search will uncover troublesome patents that may be asserted. A follow up invalidity search on those patents will ensure that any opinion formed as to invalidity will be correct. Because an incorrect belief as to invalidity is not a defense to an induced infringement claim, the freedom to operate and invalidity searches must be thorough and of high quality.

The SPSG team works closely with its clients to develop a search strategy to accomplish the clients’ specific goals. At the outset of every search, the client and a principal searcher discuss the scope of the search to develop these goals. If necessary, other members of the SPSG team also assigned to the project may participate in the discussion to facilitate a unified understanding of the search scope. When a client follows up a freedom to operate search with related searches, the client experiences consistent quality and cohesion between searches due to the individualized attention given to the client’s goals from search to search. This results in a higher likelihood of both uncovering troublesome patents and correctly identifying invalidating prior art while also saving time and expenses in performing these searches than would be seen without individualized attention to the client’s goals spanning multiple searches. Questions? Please feel free to contact Patent Search Associate Stacia Stokes, J.D. at stacia.stokes@shermanpatentsearch.com.

By: Stacia Stokes, J.D.
Patent Search Associate
stacia.stokes@shermanpatentsearch.com

The Significance of “Knock-out” Prior art in Proceedings at the PTAB

At SPSG, we understand that pursuing invalidity at the PTAB using a post-grant proceeding, such as Inter Partes review, covered business method patent review, or post grant review, is quite different from district court invalidity. The PTAB expects precise arguments showing invalidity or obviousness on a limited number of grounds. Often, PTAB proceedings are not instituted merely on the basis of too many grounds based on insufficient prior art. The PTAB favors concise arguments based on “knock-out” prior art that clearly invalidates or renders obvious the claims at issue in the subject patent.

SPSG employs sophisticated search techniques to provide you with only the best prior art. We do not dump a long list of references on our clients expecting them to sift through it to find the two or three best pieces of prior art to use in filing a post-grant proceeding at the PTAB. Moreover, we customize every search report to provide detailed notes summarizing the search as a whole and summaries of each reference with the most relevant portions emphasized. Finally, we can also provide a claim chart showing how the most relevant reference invalidates the challenged patent. For more information, please feel free to contact our offices at 626-432-7292.

By: Stacia Stokes, J.D.
Patent Search Associate

Harnessing the Power of NPL Citations for Invalidity Searching

Here at SPSG, one of our strengths is our approach, capability, and knowledge of non-patent literature (NPL). NPL is often a category of prior art that is seldom explored, and is typically under-utilized at the search level. While we implement state-of-the-art search heuristics for patent searching, we also devote substantial attention to NPL searching best practices. We are constantly collecting data on NPL sources, and testing those sources for their strengths and weaknesses.

One NPL tool that offers a unique and powerful utility is Web of Science. Web of Science, which is conventionally viewed as an academia tool, offers a unique function that allows the user to see both references that are cited by the article, and also any references that cite the article. This feature is akin to backward/forward searching in the patent landscape (i.e. seeing those references cited on the face of the patent, and any patent that cites that patent). The ability to backward/forward search NPL is incredibly powerful, much like backward/forward searching patent literature can shed substantial light onto a search, the ability to do the same with NPL can yield useful and often never-thought-of search approaches. This approach can also introduce you to other terms of art that were not considered before. Thus, the ability to citation search NPL often enhances and expands the search.

At SPSG, we take full advantage of NPL, and in particular, backward/forward searching NPL. In some cases, NPL is the best avenue for certain invalidity studies (depending on the technology, or what is already known to the PTO, etc.). Therefore, it is critical to maximize the utility of NPL, and at SPSG we have that knowledge and experience. For more information, please call our offices at 626-432-7292, or email us at info@shermanpatentsearch.com

Only as Good as the Tools You Have…

We recently had a great conversation with a client, discussing the nuances of search, and the concept of optimizing search heuristics by understanding the strengths and weaknesses of one’s search tools. For example, it is quite commonplace to perform a “search” utilizing free search tools, such as Google Patents, or the USPTO’s online search tool. There are substantial limitations in each of the aforementioned tools, that one must understand before reaching any viable search confidence. For instance, Google Patents lacks complex boolean and proximity capabilities. Google did add the “AROUND” function, however in our practice we have found this operator to be marginally accurate / useful. It is also important to note that searching on USPTO.gov only covers US patent literature, and a limited body of data at that. Further, both interfaces are not conducive for efficient, precise patent searching. As a professional search firm, we rely on a plurality of advanced, subscription-based search tools, again, each with it’s strengths and weaknesses. Powerful searching requires powerful tools, and deep knowledge of the limitations of each tool. For more information, please feel free to contact our offices at 626-432-7292

Expansion of NPL

Here at SPSG, we are constantly improving not only our search techniques / heuristics, but also the tools in our arsenal. One source of prior art frequently overlooked by other search firms is NPL (non-patent literature). Due to frequency and demand by our petrochemical / oil clients for our search services, we are proud and excited to announce our access to full-text coverage of Onepetro.org (Society of Petroleum Engineers). Onepetro is the single best source of petrochemical white papers and NPL. While we have always covered Onepetro in our searching, we now offer full-text access as well.

We pride ourselves on our knowledge and experience, and are always aiming to have the best tools at our disposal. For more information, please contact us at info@shermanpatentsearch.com, or call our offices at 626-432-7292.

Patent Searching…and Snowflakes

At SPSG we have a very particular best practices, based on time-tested methods as well as USPTO Examiner experience. One of the cornerstones taught to our team, is that no two searches are identical, and that each search requires its own unique approach. This concept requires the searcher to dynamically approach each search, essentially responding to the art as it is shown to them. For example, with respect to invalidity studies, it is imperative to have a clear understanding of the prosecution history, prior to even inputting a single search query. Understanding where the Examiner searched and subsequently failed to search, is critical in formulating the most effective search strategy. This formulation results in a unique approach to that particular search that takes into account the prosecution history, as well as an understanding of how much ground the Examiner actually covered. Invalidity studies are just one example of how every search requires its own identity.

There are indeed discrete steps that should be taken in most / all searches, for instance, citation searching. It is important to note that certain steps have more priority in certain searches. The goal of a successful search is to maximize accuracy, and minimize missed art. We can maximize accuracy by finding the most efficient route to the best art. The way to accomplish this efficiency is to dynamically approach each search, based on experience and being cognizant of the art as it is uncovered.

AIA services: Preissuance Submissions

As per new AIA provisions, third parties are now permitted to anonymously submit prior art of record that may be relevant to the examination of a patent application that is currently in prosecution. We provide the required concise description of relevance, in the form of a claim chart. The search approach is very similar to an invalidity search. For more info, please call our offices at 626-432-7292, or email us at info@shermanpatentsearch.com