EDITED BY:
`
`David Hun!
`
`Long Nguyen 6:
`
`Matthew Rodgers
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`
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`IRONBURG EX2035, Page 1
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`IRONBURG EX2035, Page 1
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`

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`Patent
`Searching
`Tools &
`Iechniq11es
`
`DAVID HUNT
`LONG NGUYEN
`MATTHEW RoDGERS
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`John Wiley & Sons. Inc.
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`IRONBURG EX2035, Page 2
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`

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`Copyright © 2007 by John Wiley & Sons, Inc. All rights reserved.
`
`Published by John Wiley & Sons, Inc., Hoboken, New Jersey.
`
`Published simultaneously in Canada.
`
`No part of this publication may be reproduced, stored in a retrieval system, or transmitted in any form or by
`any means, electronic, mechanical, photocopying, recording, scanning, or otherwise, except as permitted
`under Section 107 or 108 of the 1976 United States Copyright Act, without either the prior written permission
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`or online at http://www. wiley. com/ go/permissions.
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`Limit of Liability/Disclaimer of Warranty: While the publisher and author have used their best efforts in
`preparing this book, they make no representations or warranties with respect to the accuracy or completeness
`of the contents of this book and specifically disclaim any implied warranties of merchantability or fitness for a
`particular purpose. No warranty may be created or extended by sales representatives or written sales materials.
`The advice and strategies contained herein may not be suitable for your situation. You should consult with a
`professional where appropriate. Neither the publisher nor author shall be liable for any loss of profit or any
`other commercial damages, including but not limited to special, incidental, consequential, or other damages.
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`For general information on our other products and services, or technical support, please contact our
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`For more information about Wiley products, visit our Web site at http://www.wiley.com.
`
`Library of Congress Cataloging-in-Publication Data:
`
`Hunt, David.
`
`Patent searching : tools & techniques /David Hunt.
`
`p.cm.
`
`Includes index.
`
`ISBN: 978-0-471-78379-4 (cloth: alk. paper)
`
`1. Patent searching. 2. Patent literature. I. Title. II. Title: Patent searching tools and techniques.
`
`T210.H86 2007
`
`025.06'608
`
`2006030758
`
`IRONBURG EX2035, Page 3
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`

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`Chapter 1
`
`1 7
`
`Patent Law and Examination as Context
`for Patent Searching
`
`"If nature has made any one thing less susceptible than all others of exclusive property, it is the action of the
`thinking power called an idea, which an individual may exclusively possess as long as he keeps it to himself;
`but the moment it is divulged, it forces itself into the possession of every one, and the receiver cannot dispossess
`himself of it."
`
`—Thomas Jefferson, Letter to Isaac McPherson, Monticello, August 13,1813
`In hindsight, the third president of the United States and the driving force behind the establishment of Americas
`first patent laws in 1790 was ahead of his time. Jefferson lived when a subject matter like biotechnology was
`known only vaguely; maybe through a farmer's knowledge of crop rotation, the use of manure, and the need for
`better soil preparation. Yet, the laws that he helped create still govern the practices of our present-day patent
`system and are able to encompass far-reaching technologies. Without knowing what the future held for
`intellectual property (IP), Jefferson crafted patent laws that continue to accommodate the review and prosecution
`of a myriad of technical subject matters.
`During the early years of the U.S. Patent Office, a diligent search was important but not as difficult to carry
`out as it is now—considering a single cabinet ("shoe") held all of the patents ever granted. The burden of the
`search was minimal on an inventor. In the present day, not only is a thorough search a "must" before entering
`patent prosecution (examination), but multiple searches at different stages in the life of a patent are now
`necessary. In the midst of our litigious culture, one has to be poised for unexpected miscues during their ideal
`patent term.
`Patent searches before prosecution help improve the defensibility of the future patent, or can dissuade the
`inventor from prosecuting at all. Your preexamination preparation as an inventor, patent attorney, agent, or
`searcher will save the patent owner time and money later.
`For example, consider spending US$25,000 to prosecute a patent application only to learn from the examiner
`that the invention lacks simple novelty. Worse, the examiner may not conduct an adequate search and you
`actually receive a patent that is later held invalid. The costs of that mishap will be enormous. A professional8
`patent search will allow you to "look before you leap."
`The many available search types that will be outlined in this text will yield invaluable data for an applicant
`who wants to increase their chances of earning a profitable return on a corporations substantial investment.
`
`The U.S. Patent System
`
`Before discussing patent searching, it is first necessary to explain the patent system in the United States today,
`so that you and other readers can appreciate the challenges inherent in its navigation.
`Thomas Jefferson's quote speaks to the uniqueness and idiosyncratic prospect of owning ideas, the building
`blocks of intellectual property (IP), and the challenges that exist in their maintenance and development.
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`IRONBURG EX2035, Page 4
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`Intellectual property consists of patents, trademarks, copyrights, and trade secrets. Article I, Section 8 of the
`United States Constitution empowers Congress to "promote the progress of science and useful arts by securing
`for limited times to authors and inventors the exclusive right to their respective writings and discoveries:' Of
`the three types of intellectual property created by the Constitution, patents offer their inventors the strongest
`protection and, not surprisingly, present the highest hurdles to overcome in their application process.
`To receive a patent, the inventor enters into a quid pro quo with the United States government or any other
`government where a patent is sought. In exchange for the exclusive right to manufacture, sell, and use his
`invention, the inventor provides to the public a full, enabling description of how to make and use the invention.
`
`The Benefits of Patent Protection
`Governments expect that with new, patented information in the public domain, more scientists will be encour(cid:173)
`aged to innovate with knowledge of these technological and scientific advancements. This fact may be counter(cid:173)
`intuitive at first. You might argue that the public would actually benefit more if the inventor published their
`findings and shared their knowledge through the literary community. After all, the process would take less time
`and it is free. However, considering for example the patenting that occurs in biotechnology and the patenting
`of drug formulations, a company needs some assurance that they will have the exclusive right to a technology
`before they will invest millions in its development. Only a patent can give them this right.
`l9
`In the United States, a pharmaceutical company has to invest heavily in initial research and development and
`subsequent testing and approval processes as required by the U.S. Food and Drug Administration (FDA).1 This
`substantial investment provides reasonable assurance of a profit-in the form of patent protection-if research
`and development (R&D) is successful. The high cost of R&D also affects others, including the electronics,
`automotive, and energy industries. Patents grant them exclusive rights to the technology for limited times to
`recoup their costs and achieve profits.
`A mere disclosure of technology in a publication may not spur commerce, as it does not guarantee any such
`right and only discloses the researcher's propriety information on which other groups may potentially build.
`Similarly, other inventions may require a great deal of groundwork or marketing before the invention included
`in their patent truly becomes accessible to and able to impact a field. In both of these scenarios, a large investment
`must be made by the patent owner (assignee) to prepare their invention to reach the public. Without having a
`guarantee for the exclusive right to manufacture, sell, and use a technology, it is highly unlikely that an entity
`would spend so much time, effort, and resources nurturing their inventions. A time period of exclusive control
`of patent rights affords the assignee the opportunity to recoup their research, development, or marketing costs
`. h
`. h
`2
`m erent m t e process.-
`There are few assets that are as difficult to protect as IP. Therefore, it should not be a surprise that there are
`just as few assets in the global marketplace that demand the expertise of such a diverse population of professionals
`in order for the eventual worth of the technology to be realized. Patents have wide appeal across many fields,
`from a farmer in need of a genetically modified, insecticide-resistant soybean to a retired engineer who tinkers
`in his basement workshop, to a venture capitalist seeking a highly profitable investment opportunity-patents
`influence the choices of individuals in a variety of paradigms.
`Readers may find themselves practicing their specialty in a variety of different fields: science, engineering,
`law, patent searching, or business development, to name a few. With the attention of such an educated and
`highly specialized group of professionals, obtaining and managing a patent throughout its life must not be att0
`easy process; however, significant gains are expected once an exclusive right to a particular property is received.
`The owner of a patent by right is its inventor; however, the inventor usually assigns his rights to his employer
`(corporation, university, or organization) in his employment contract. Therefore, the assignee has the exclusive
`right to the particular technology. The patent owner controls the ability to license the patented technology or to
`exclude others from making, using, or selling it.
`
`IRONBURG EX2035, Page 5
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`Harmonization of Patent Laws
`While a U.S. patent is enforceable only within the confines of the United States, there are steps being taken to
`harmonize the patent systems of the world, so one day many countries might have more uniform patent laws.
`A harmonized patent system will allow an inventor to receive patent protection in foreign countries more
`seamlessly. The goal of U.S. legislators is to protect an American patent holders rights and to facilitate the filing
`and protection of patents internationally.
`
`The Paris Convention
`Much progress has been made to accommodate the prospect of such a system. The evolution began in 1885.
`The Paris Convention was first signed in that year and since has been adopted by every industrialized nation
`(except Taiwan). In addition to creating the concept of priority, which gives the patent holder up to 21 years of
`protection in most cases, the Convention afforded new freedoms to inventors of the adopting countries. An
`inventor from any of the signatory countries may file an application in any other member country within one
`year of the filing in their home country and receive the benefit of the home country's filing date during
`examination.
`
`The Patent Cooperation Treaty
`Then, in 1970, the Patent Cooperation Treaty (PCT) was signed and adopted by ICQ countries. This treaty
`allowed patent offices around the world to share in the burden involved in patent prosecution, such as the search
`and preliminary examination of an applicants subject matter.
`
`Trade-Related Intellectual Property Rights (TRIPS)
`More recently, the World Trade Organizations (WTO's) Trade-Related Intellectual Property Rights (TRIPS)
`agreement ushered in harmonization efforts, including patent agreements through the General Agreement or?1
`Tariffs and Trade (GATT) and North American Free Trade Agreement (NAFTA).
`GATT was signed by U.S. President Bill Clinton in 1994 and introduced patent term alterations and the
`"provisional application" in America. Now U.S. patent filers may benefit from the same one-year increase in
`patent term as those applicants who had filed a foreign application in other countries. Before its implementation,
`the U.S. patent term was 17 years from the date of its issuance, subject to the payment of maintenance fees.
`Following the agreement, the patent term was changed to 20 years from the date the application was filed in
`the United States, or 20 years from the earliest filed application if the application contains a specific reference to
`an earlier application filed under 35 U.S.C. 120, 121 or 365(c).-The 20 year patent term may also be extended
`by at most five years to compensate for various delays experienced during the patents prosecution. The change
`to a 20-year patent term has also greatly reduced the occurrence of submarine patents in the United States.-
`
`American Inventors Protection Act of 1999 (AIPA)
`Most recently, the United States passed the American Inventors Protection Act of 1999. The law requires that
`any application filed after November 29,2000, be published and made publicly available after 18 months of filing
`an application with the USPTO,- except under special circumstances. Each of these acts has brought the U.S.
`system into closer alignment with the rest of the world.
`
`IRONBURG EX2035, Page 6
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`The Priority Date
`The concept of priority is fundamentally tied to patentability. The criticality of "filing dates" was mentioned
`earlier, and the "priority date" is defined by the earliest filing date. It is the date behind which the applicable
`reference (also known as "prior art") will be found. The priority date is crucial to several types of patent searches.
`
`The U.S. Provisional Application
`In order for inventors to enjoy the 21-year patent term in the United States, the provisional application was
`created after the GATT agreement. The inventor would submit the provisional application to the USPTO one
`year before his formal patent application and, if the patent is granted, obtains a year earlier priority and the
`possibility for a 21-year patent term. Thus, the provisional application is a placeholder in an applicants chain of
`priority. It is never examined and it expires one year from its filing date.
`2
`Most importantly, the applicant's "priority date" is the earliest filed application (either in the United States or
`as a foreign application) that is recognized in the United States as a credible claim to priority (under 35 U.S.C.
`120, 121, or 365(c)).
`
`Continuing Applications
`The continuing application can help preserve a priority date. In the United States, the continuation application,
`the divisional application, and the continuation-in-part may be filed, depending on your goals with regard to
`the examination process.-
`
`Nonprovisional Applications
`In the United States, you can file three types of nonprovisional patent applications: utility, design, and plant
`applications. Each has its own rules governing examination, but all are searched similarly.
`Patent offices use a classification system to categorize patents into distinct technologies and to identify the
`particular claimed field in patent art. Sometimes, a single invention may be described by multiple classification
`codes.-
`The classification code also allows examiners and searchers to quickly narrow a search of the prior art to the
`particular subject matter of interest.
`
`Sections of a Patent
`The granted patent has many sections. At some point you will read each one of these sections to assist you in a
`search. The following table briefly describes the important sections of a U.S. patent. Many of these items also
`are printed on non-U.S. patents.
`
`IRONBURG EX2035, Page 7
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`

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`Chapter 2
`
`34
`
`Types of Patent Searches
`
`This chapter introduces the types of searches used by patent counsel to help assess patentability, validity,
`infringement, clearance, and state of the art. The text defines each search, suggests when the search is needed,
`and what types of art to review to ensure its completeness. The chapter does not discuss the mechanics of
`searching.
`
`Patentability
`
`What Is a Patentability Search?
`Patentability searches (novelty searches) are conducted prior to the filing of a patent application. They help a
`patent attorney or agent determine whether an invention can be patented and, if so, what other patents or
`nonpatent literature would be relevant to that assessment.
`The patentability search seeks to determine if anyone disclosed the inventive concept in a publicly available
`work anywhere in the world before a date determined to be critical. The process includes a search of the prior
`art.
`In order to receive a patent in the United States, the invention must be novel,l not obvious,1 and have
`industrial applicability. J.
`Industrial applicability (or usefulness) is a prerequisite for a patent search. There is no reason, for example,
`to begin a search for an invention that is physically impossible, such as a machine for time travel.
`Instead, the patent searcher focuses on the questions of novelty and obviousness. He finds written evidence
`that would dispute whether the invention is novel or would show that the invention would have been obvious
`to those skilled in the technological area. This means identifying duplicate inventions, if possible, and previously
`disclosed features of an invention by anyone.
`
`When Is a Patentability Search Needed?
`The patentability search is useful prior to preparing and filing a patent application. The results will help determine
`whether to pursue patent protection and may indicate what issues could arise during examination.
`The search helps the writer of the patent application construct claims to achieve the broadest possible
`protection without treading on the known prior art. In others words, the searcher locates relevant patents and
`publications that inform the claims writer of the absolute limits of possible protection.
`In the absence of claims before the drafting of an application for patent, the search results will be limited by
`the specificity of the end user's request. This becomes important during prosecution when claims interpretation
`will impact the applicant's intellectual property protection.
`
`IRONBURG EX2035, Page 8
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`

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`In the United States, patentability searches are not required for the filing of a patent application. Though w§5
`strongly recommend a patentability search before filing, we have learned at least two reasons why some fail to
`conduct them beforehand:
`1. The inventor is so well versed in the technology through education, conferences, experimentation, and
`the reading of books and periodicals that he just knows the "state of the art." He can recognize that an
`invention is a significant advance without having to conduct the patent search.
`2. The filer or owner of the patent application is hurried. The organization speculates that others are equally
`interested in obtaining patent protection on the same concept and need to file quickly. This is more of an
`issue in a "first-to-file" country compared to the United States, which is a "first-to-invent" country.
`The first reason is short sighted, particularly when no one can be certain of who is inventing what, when, and
`where. The second reason is understandable. Nevertheless, we recommend conducting the patentability search
`sometime prior to or during examination to provide some assurance that you can really patent the inventive
`concept, to avoid potentially costly litigation later, and to assist you with the examination of claims during
`prosecution.
`
`What Needs to Be Searched in a Patentability Search?
`Because any relevant written evidence may impact novelty or obviousness, you should search full patent
`specifications and the claims and all available technical and nontechnical publications (e.g., product brochures
`and conference proceedings). Any written material that precedes the filing date of a patent application or the
`present, if the application has not been filed, should be included. What you search and how long you search is
`merely a function of your available time, your budget, and the public availability of the information.
`In most countries, patent authorities assess novelty by whether an invention was patented or described in a
`printed publication anywhere in the world. Therefore, you should search the patents and published patent
`applications of all the major patent offices and any other countries where time permits.
`Too often, patent applicants and their legal counsel limit their searches to selective sources (such as U.S.
`patents only), perhaps expecting the patent office to fill the void with its own search. This is a major mistake
`and one of reasons why some patents are easily invalidated or the subject of costly litigation^
`Although patentability searches may end with the identification of duplicate inventions, other types of
`searches are by definition exhaustive; that is, they attempt to identify all art related to the scope of a disclosure?6
`The exhaustive searches covered in the following sections include legal searches of patent validity, patent
`infringement, and state of the art.
`
`What the Searcher Needs to Know to Search Successfully
`The more the professional searcher understands the details of the invention and its points of novelty, the better
`the results he will achieve.- This fact cannot be overstated. Prior art that the searcher cannot locate may haunt
`the patent owner later. In fact, critical missed prior art may be used to invalidate the granted patent later.-
`
`VaUdity
`What Is a Validity Search?
`Validity searches (also called invalidity searches) are used to determine absolute novelty at the time of invention.
`For this reason, a validity search maybe thought of as an exhaustive patentability search that has been conducted
`after publication of the patent application or issuance of the patent. With this search, the claims- are validated
`against all prior art.
`
`IRONBURG EX2035, Page 9
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`When Is a Validity Search Needed?
`The goal of a validity search is to locate evidence that the patent claims were granted erroneously due to either
`oversight or concealment of the prior art during the examination process. Validity searches often are the result
`of potential patent infringement or a potentially profitable business opportunity.
`Examples:
`1. Invalidity. An automotive company has been sued for patent infringement. In response, the company
`conducts a search to invalidate the patent of the accuser. By illustration, Fast Car Company has been selling
`a certain vehicle type with a certain type of spoiler. Sleek Car Company owns an unexpired patent claiming
`that very combination of vehicle type with spoiler. So, the legal counsel of Sleek Car informs Fast Car of
`the alleged infringement. Fast Car conducts an invalidity search and informs the accuser that the patent
`in question is invalid and, therefore, unenforceable. They cite art that discloses the subject matter of the
`Sleek patent before its filing. These are patent references that were not considered during patent prosecution
`of the Sleek patent.
`2. Enforcement readiness. The owner of an infringed patent is considering a lawsuit. In preparation, the
`company conducts a search to validate its patent as a precursor to enforcement. Sleek Car Company owns
`the unexpired patent on the specific type of vehicle with that specific type of spoiler. They learn that Fast
`Car Company has been selling the same combination. Before incurring costly litigation, Sleek Car needs 37
`reasonable assurance of a successful outcome. The company also anticipates that Fast Car will defend itself
`by asserting the invalidity of the patent in question. Therefore, Sleek Car conducts a validity search to
`assure the enforceability of the patent and to discover any previously unknown art that Fast Car may assert
`against the patent.
`3. Licensing. The licensee conducts a validity search to ensure that proposed royalty payments are justified.
`The patent owner (licensor) also conducts a validity search, knowing that a highly defensible patent will
`command greater royalties. By illustration, Fast Car Company wants to sell the car with the spoiler
`combination, believing they are well positioned to reach the aftermarket. Meanwhile, Sleek Car Company
`owns the patent but does not manufacture or sell the vehicle/spoiler combination. Fast Car offers to pay
`Sleek Car royalties for the licensing rights to the patented invention. Before agreeing on the royalty amount,
`Fast Car Company conducts a validity search. Fast Car fears that another car manufacturer will quickly
`replicate the successful product; they want royalty payments if another competitor could freely replicate
`should the patent be invalid. Meanwhile, Sleek Car Company conducts its own validity search knowing
`that a highly defensible patent will command greater royalties.
`Sometimes, upon issuance of your patent, another patent comes to your attention during an infringement
`search. It might appear that the claims of the other patent are broader than yours but fully encompass your
`invention. In an attempt to avoid potential litigation, you offer to in-license the other patented technology.
`Unfortunately, the company that owns the adverse patent is not interested in licensing to you.
`You could decide to search to invalidate your competitor's patent. While this does not forbid a patent
`infringement suit, it provides some protection against the amount of damages awarded if a suit is filed. The
`process of establishing invalidity is not a trivial one. However, if you can prove that other patent is invalid, it
`could be shown that you did not willfully infringe on it.
`
`What Needs to Be Searched in a Validity Search?
`The subject features of the search are the claims (of a utility patent) or drawings (of a design patent). Patent and
`nonpatent literature is searched for relevancy prior to the earliest claimed priority date of the patent in question.
`In other words, you would analyze the same documentation as that of a patentability search except anything
`published after this critical date.
`38
`The search would include full patent specifications and claims of global patents filed on or before that date. It
`also would include any technical or nontechnical literature published on or before that critical date.
`
`IRONBURG EX2035, Page 10
`
`

`

`With a U.S. patent, the critical date is:
`• The filing date of the U.S. patent or published application containing the claims to be validated.
`• The publication date of a foreign or Patent Cooperation Treaty (PCT) equivalent of the U.S. patent or
`application if that publication date precedes the U.S. filing, and that filing claims foreign priority.
`• The priority date established by the filing of a parent application that contains the claims to be validated,
`as can be the case when the patent at issue is a continuation or a continuation-in-part, for example.
`Sometimes you will search art after the critical date. This might uncover references published slightly after
`the priority date, which actually may have been publicly available before the printed publication date. If you are
`a nonattorney searcher, agree on the critical date with the attorney who commissioned the search prior to start.
`
`Infringement
`
`What Is an Infringement Search?
`Infringement searches are used to determine whether an enforceable patent claims the same matter as your
`concept or unpatented invention. Accordingly, the document set for these searches consists of only unexpired
`(in-force) patents.
`Ideally, you would begin the search by comparing a set of written claims against the claims of relevant in(cid:173)
`force patents. Without written claims, you could proceed with a written description from which you could draft
`a set of hypothetical claims. Patent claims that read on the subject matter of the disclosure can be said to read
`on the real or hypothetical claims to which the search is directed.
`Although a patent offers an exclusive right to the patent holder, it does not expressly provide the right to
`practice the invention in an environment where another issued patent broadly encompasses the claimed subject
`matter.
`Broadly, the infringement search:
`• Provides the applicant with the existence of issued U.S. patents (if their filing will be in the United States)
`that claim the same subject matter as that which they intend to include in their filing.
`• Includes a search of all enforceable (normally at least 20 years earlier than applicant's filing date) claims
`of U.S. patents and published applications.
`• Compares applicant's proposed claims (most often independent) to those issued or pending.
`• Compares applicant's claims to a broader claim that is encompassing of applicant's invention found in
`the issued patents.
`A useful tool in your analysis is a claims comparison chart that compares the in-force patent claims with the
`subject matter of the disclosure. Such a tool is presented in Chapter 5.
`
`39
`
`When Is an Infringement Search Needed?
`The patent infringement search is needed prior to making, using, or selling a product or service where you
`might suspect the evidence of patented technology. Because of its heavy focus on claims, it is sometimes
`conducted prior to drafting claims in your own patent applications.
`In the United States, which is a "first-to-invent" country, some companies will monitor their competitors
`closely, read the claims of every published patent application their competitor has filed, copy the claims verbatim
`in their own filing, and file a resulting patent application. This is done when you are certain that you were first
`to invent the concept and reduce it to practice. It is a very effective approach to initiating an interference with
`another filer when you are certain of your case.
`
`IRONBURG EX2035, Page 11
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`

`

`What Needs to Be Searched in an Infringement Search?
`A professional infringement search is directed to the claims of all in-force patents and patent applications. You
`would search the patent documents of the country or patent authority of alleged infringement. Unless otherwise
`directed, you would not search expired patents or patents that expired for failure to pay maintenance fees. You
`would not search the patent documents of countries or authorities where infringement has not been alleged.
`You would not search nonpatent literature.
`You should seek to locate not only the exact claimed invention, but one of broader scope. For example, if the
`newly issued patent claim was drawn to a method of making cappuccino, and the infringement search revealed
`a method of making coffee in an earlier issued patent, a possible infringement may occur.Z,~
`Many patent attorneys appreciate any additional information that assists with their assessment of
`infringement. For example, the current legal status of any relevant patent can impact the direction of an
`infringement opinion. A professional patent searcher will often provide supplemental information about relevant
`patents, such as patent adjustments and extensions.
`In recent years, a larger percentage of U.S. patents have been found valid and infringed. This is an interesting
`fact that has been the result oflegislation, the establishment of the U.S. Court of Appeals for the Federal Circuit
`(CAFC), and the direction of U.S. case law.
`40
`
`Clearance
`
`Wit at Is a Clearance Search?
`Clearance searches ("right-to-use" or "freedom-to-operate" searches) are used to determine whether a party has
`"clearance" to make, use, and sell an inventive concept. Clearance is established when a patent has not been
`infringed or has otherwise expired.
`
`When Is a Clearance Search Needed?
`The clearance search is needed prior to bringing a product to market. The