It’s been days since I’ve shaved. I’ve spent 3 solid days over the Thanksgiving holiday hunkered down in my office studying patents and following threads through the IP swamps of Mordor. A friend has engaged me to do some consulting and needs an IP map of a particular realm of industrial chemistry. I have no confidentiality overlap with this area of technology so I agreed. It sounded so easy when I said yes and estimated my fee. Now that I have blown well past anything I could ever hope to recover in terms of billable hours, I’m still blasting and hand shoveling muck from the pit of my own making.
His company is currently putting a plant in the ground to produce a well known commodity and the question foremost in their minds is- what added value beyond [—] does the product have?
I’m reasonably good at diving down the rabbit hole in the patent world and finding what I need to know. But the current project has forced me to press into use more USPTO resources since I don’t have a personal SciFinder account for this work. Especially useful has been the classification system. Patent lawyers will scoff at my swoon over this and flash their Esquire stinkeye since they are all too familiar with it. But chances are they don’t use SciFinder like chemists do.
SciFinder’s ability to find patent families from a structure or CASRN input is phenomenal. Even from within Markush claims. I’ve had one search with combined SciFinder/USPTO resources compared with legal specialists using their own search tools. My search was just as exhaustive as theirs. Yes, SciFinder has flaws. And not finding claims is like a negative experiment. But it is a very good tool for combing the ground.
Part of my approach stems from my natural inclination to browse. I drive people nuts when I go to a store with them because I will thoroughly examine the contents of the store for interesting items. I drive the merchants nuts because my browsing rarely results in a sale. (Notice that the theme is that I drive people nuts.)
Once you find a lead patent it is important to search the classification as well as cited patents. It is a simple matter to do a search by classification and dredge up hits. Once the fish are on board, it is about sorting the results and casting the trash fish back in the water.
Google Patents is an excellent resource and I heartily recommend it. It retrieves pdf’s of the entire patent document as well as providing links to patents cited and those patents citing the patent of interest. It also links to the the classification site at the USPTO. A simple click of the mouse in the USPTO site pulls up a search of all of the patents under that classification.
On occasion, Google patents will not retrieve a particular patent or application. This seems to happen with very newly issued patents and applications in general. For this circumstance I use pat2pdf.org. You might have to monkey with the formatting of the application number string, but it almost always returns the document eventually.
OK. It’s fine to be able to retrieve a bunch of patent numbers and pdf’s. But soon one becomes overwhelmed by the large amount of highly dense data that has been recovered. In my surveys, I use a form meant to collect key information, but sized in a manner so as to limit the amount of detail I can write down. Feel free to use this form or modify it as you please.
At some point it becomes useful to use Excel to develop a matrix of patent information. In particular, one can retrieve a list of patents from the PTO and cut and paste them into Excel. They’ll paste as hotlinks, so all you have to do is to right click on the cell and select the unlink option. Tedious but effective.
I have developed an Access database to store patent information and other IP office actions and produce reports for due diligence studies. This is very handy, but eventually you become enslaved by upkeep as is true with all database tools.
Am I suggesting that one does his own lawyering? Not at all. But if you’re in high tech manufacturing, one must be very careful to avoid infringement. It it crucial that a few technical people in the organization be familiar with the patent picture. It is far better to avoid infringement in the first place than to have to find a way out of it.
The best way to use a patent attorney is to be informed in all interactions with them. While they can often noodle through a problem presented to them by napkin scribblings and hand waving, it is best for the client to be knowledgeable about the patent landscape and to help the attorney to focus on the key legal issues. Good lawyering happens when the attorney clearly understands the nuances of the problem and can act accordingly. Having a list of prior art or other IP facts will save you billable hours in the form of research and needless office actions.
Your attorney is an officer of the court and has a legal obligation to honesty and fidelity to the system. Being well informed in advance and working cooperatively with a patent attorney will go a long way to staying out of litigation.
The other good reason for closely studying the patent literature is to find what some call the “white space”. This is the negative space around the claimed art that is not claimed and is likely to be free to practice or fertile enough to file a application on. If you Google “patent white space” you’ll find that this is a cottage industry. A study of white space may provide insight into maneuvering room around a patent.