Searching Patents

Background

Many innovators and those interested in exploiting innovation often have doubts about the inventiveness of any new product or process. Inventions rarely live in a vacuum and very few ideas are truly unique. Mostly, they are solutions designed to overcome known problems or to overcome known inadequacies with existing methods or materials.

The majority of inventions therefore have some form of precursor, an associated history or a traceable background from which from the invention has sprung.

It is therefore not uncommon for inventors, once the light of inspiration has dawned in its full brightness, to ask themselves “This must have been done before, surely? Why hasn’t anyone else thought of doing this?”

More often than not they are right.

Similarly, when developing new products and processes the first question asked by a research department is always “has this been done before?” The second question is “Can we develop and exploit the idea commercially?”

But how do they know for sure? The only way to find out for certain is to do a search. A well-executed search can quell nagging doubts, inspire further development and even energise innovators to go beyond the concept and prototype stage and into full production – with confidence.

A search will also provide insights into the “state of the art” of a technology at any given moment in time and can establish the “frontiers of knowledge” on a chosen subject. As such, a search is a useful tool, which will enable innovators and entrepreneurs to paint a picture of the commercial potential of an idea. It is also likely to reveal key players in a particular technology field. It will find rivals, competitors and even possible licensees.

This article, and future articles, will endeavour to answer the above questions and to provide a basic understanding of why a search is necessary, who should do the search, what should be searched, when to make a search, the sorts of searches that are made and how to arrange for a professional search to be conducted. This article also gives a worked example of a search, the benefits that a professional search provides, and will highlight some of the pitfalls to be aware of. The article is written to offer an informative introduction to searching only.

If you wish to know more about getting a search done, the various options available and the costs involved, please seek the assistance of your search agent or IP professional

Who should do a search and why?

Patent searching is performed for many different reasons but probably the most important reason is that a good, well-constructed search will save money.

A comprehensive search will allow you to make intelligent, commercial decisions enabling you to press on with your innovation and to go to the marketplace with confidence. It will also give both you and any potential partners, venture capitalists, subcontractors or suppliers, the confidence to make further investment in your ideas. A search will often form one of the cornerstones of any due diligence protocol before an investment cycle can begin.

A search should also be made before entering new markets and especially foreign markets, or before undertaking any new importing or exporting activity. Patent searching is not just limited to those that invent; patent searching should also be undertaken by those that invest in new products, those wishing to license products, and by any individual or company that is serious about maintaining or increasing their market share.

Another sound reason for making a search of relevant prior art is to prevent an inventor or entrepreneur (innovator) from wasting money on an idea or product that is unlikely to result in a profit. If the product or process is known the ability to monopolise that product or process through the patent system will disappear. A search will show this and will allow the innovator to move on to fresh endeavours.

One of the more important reasons for conducting a search is to scan the patent horizon to ensure that the innovators themselves will not be infringing someone else’s monopoly rights before major financial investment has taken place.

Lastly, a search will reveal similar solutions to a problem to be solved by the invention and will often provide insights, which can be used by an innovator to enhance the new product or process or which will reveal additional possibilities where the invention might be used.

To summarise, a patent search will provide a snapshot of the existing art that will help to:

Determine whether a patent application should be filed.
Provide a check on what others are doing in a particular technology field.
Reveal who the relevant key players are in a technology field, including rivals, competitors and potential licensees.
Give confidence that the user of the invention will not infringe others’ patent rights.
Give confidence to prospective investors and venture capitalists.
Reduce the risk of infringement when entering a marketplace, especially unfamiliar or foreign markets.
Give indicators as to the likelihood of commercial success.
Provide solutions to technical problems.

Macroeconomic Reasons for making a Patent Search

Searching is not limited merely to individuals or to companies. Patent searching is increasingly being used as a vital tool in formulating relevant macroeconomic policies. Many governmental organizations are realizing the usefulness of information gleaned from the results of professionally conducted Patent searches. Internationally, patents are recognized as unique indicators of an organization’s ability to maintain and grow markets.

At a national level Patents, as a primary source of technological information, offer a unique resource for analyzing the process of technological change and for measuring the knowledge base and competitive position of a given industry or country. Data contained in patents and patent-related documents are valuable tools useful for formulating effective technology policies in both private and public sectors at regional, national, and international levels.

Searching Patent databases and the results obtained by analyzing technology trends via patent statistics can be used as a strategic economic planning tool for policy makers and to assist companies in strengthening their patenting strategies. Knowledge of new innovations gained by searching patent databases assists decision makers make better forecasts of economic growth and helps to more accurately determine opportune entry points into new markets.

A search of patent databases can provide answers to the important questions: Where? What and When?

Types of Searches

As discussed in an earlier section, searching and search reports are generated for different reasons. As a consequence, search reports, even those relating to identical subject matter, will look different depending on the type of search requested.

Search professionals generally recognize six search types. These are:

Due diligence search.
Patentability search.
Infringement search.
Freedom to use search.
Document Status search.
Product/process specifications search.

A Due diligence Search

Of all the search types this type of search is the most comprehensive and time consuming to do and will invariably involve tens, often hundreds, of search hours, and will usually require a team of searchers working independently.

A due diligence search is designed to capture all relevant documentation available to a diligent searcher at a defined date. The concept of the diligent searcher emanates from patent case law such as the General Tire v Firestone and the Beecham Group Ltd (amoxycillin) cases where the validity of a patent was in dispute.

The search seeks to answer the following question – faced with a problem and without hindsight what solutions were available at the priority date to help solve the problem? Or put another way: Given a problem and surrounded by all relevant information what avenues would be worthwhile exploring in an attempt to solve that problem or, at the very least, be worth investigating further?

The purpose of such a search is therefore to uncover all of the related subject matter available to a skilled addressee and will not be restricted by particular solutions. The number of documents recovered is considerable as the searcher attempts to survey the whole of a technical field. A due diligence search attempts to provide a comprehensive inventory of the state of a particular art.

Search strings for due diligence type searches are usually made up of key words and phrases as well as a large number of Patent Classification codes sufficient to encircle all aspects of the subject matter of a technology. A good due diligence search will also involve a search of all inventors and applicants in the related field and will provide a substantive review of the background to a given problem. Generally speaking, a due diligence search will document the problem to be solved rather than any particular solution to the problem, although attempts to solve the problem will also be reported. Due diligence searches of this type usually involve a team of searchers who look independently at a problem and will take care to avoid any semblance of hindsight.

The results of a diligent search are limited not only to patent litigation, although no litigation should take place without such a search. The search results are also an important source of a company’s market intelligence. A due diligence search will reveal data on existing competitors and any new entrants to a market. It will also find out what competitors are doing and where, and can be used as a tool for analyzing future trends and as a basis for making strategic commercial, build and buy decisions.

A Patentability Search

A patentablility search is designed to uncover any barriers that will prevent an invention being granted exclusive patent rights. The searcher will seek answers to the following questions:

Is the invention new and novel?
Does the invention disclose an inventive step?
Is the invention capable of industrial application?

For an application to be patentable it must meet all of the above requirements. To be patentable an invention must be novel, it must be inventive and it must be useful.

Patentability searches are made by those interested in gaining full monopoly (a patent) rights for their invention and will generally be conducted before a Complete Patent application, as opposed to a Provisional Patent application is filed.

A Patentability search is sometimes also referred to as a “novelty” or a “prior art” search and in the main will be directed to an assessment of the three patentability criteria discussed above. This type of search is not as exhaustive a search as a due diligence search and will focus primarily on the technical documents directly related to patentability. In the main, a patentability search will concern itself with the inventive features of the new product or process and is unconcerned with related art or background material not specifically relevant to the working of the invention. It does not provide a picture of the “state of the art” at any given point in time. It is usually only concerned with a particular solution to a particular problem. A patentability search will nevertheless be measured in the tens of hours.

A patentability type of search string is usually made up of key words and phrases as well as those relevant class codes sufficient to identify patents and published patent applications covering inventions similar to the invention that is being explored. A good patentability search will also involve a search of key inventors and applicants in a related field. Generally speaking, patentability searches focus on a particular solution or solutions to a problem rather than on the problem itself.

It must also be remembered that a patentability search is often a precursor to identifying the possible scope or limits of an invention and will allow your patent attorney to maximise the commercial potential of an idea in any subsequent patent application that may be filed.

A patentability search is often seen as a first step in obtaining a patent. The patent attorney will form an opinion of an inventor’s idea based on the patent search. If someone else has patented an invention that is similar to yours or, as the patent examiners say, anticipates your invention, then you are not entitled to patent protection and the application will be refused.

A patentability search is also an extremely important early step in deciding whether to proceed with an idea. The ability to gain the outside investment or venture capital necessary to bring an idea from a prototype to a saleable product stage is often dependent on an inventor’s ability to gain Patent rights. A patentability search will allow you to make considered decisions as to whether you should continue to explore your idea through the patent process. It may prevent you from spending a lot of money on further research, development, manufacture, protection, and marketing of an idea that has already been thought of and may already be being exploited by others without your knowledge and in markets that you are unaware of. As the old adage says “an ounce of prevention is worth a pound of cure”.

Infringement Search

To establish whether an infringement of a patent has taken place the patent owner must prove that the following has occurred:

The infringer has carried out a prohibited act. That is, that the infringer has made, used, sold or imported a patented product, or has used a patented process, or has made, used or sold a product made directly from a patented process.
That the prohibited act has taken place in the country where the patent has been granted.
That the prohibited act has occurred after publication of a granted patent.
That the prohibited act falls within the scope of at least one claim of the granted patent.

An infringement search is made to ascertain all of the above and will result in a search of the patent database applicable to the country in which the product or process is to be used, made, sold etc. A patent infringement search should be made by any individual or company wishing to export products overseas or before entering into any agreement to supply goods overseas. Patents are restricted by territory so although you are free to export from Australia to Europe for example the same may not apply to your ability to export that same product to the United States.

An infringement search is less involved than a due diligence or patentability search, as it is restricted only to existing patents that remain in force and which have not lapsed or expired. An infringement search will generally only involve a search of patent databases covering the last 20 years or so. Be aware though that an increasing number of patents and especially those in the pharmaceutical domain are extended for longer than 20 years.

The search strings used in an infringement search generally consist of key words and phrases as well as specific Patent Classification codes sufficient to identify existing patents covering the subject matter of the product or process being explored. A good infringement search will also involve a search of key inventors and applicants in the subject field. Generally speaking, infringement searches focus on specific products or processes and are generally, although not exclusively country specific. In many instances the key players in the subject area will be known.

Another useful and important aspect of an infringement search is that it will reveal those patents that are likely to be infringed and to design around them or to make subtle improvements on them. It is not uncommon for competitors of existing patent holders to avoid infringement by making similar products not covered by the patent claims. To do this the patent first needs to be found.

Infringement searches are one of the most widely used search types. Conducted properly, they will take in the tens of hours to complete.

A Freedom to use Search

A Freedom to use search invariably involves a narrow subject area search and can be limited to perhaps three or four key words, one or two Patent Classes and one or two applicants or inventors. This search will ask questions about a specific, clearly defined product or process about which much is already known. Similar to an Infringement search the main purpose of the search is to determine whether known technology is free to use. That is: Is the technology covered by a patent? If so, where is it covered?, and, Is that patent still in force?

A Document Status Search

This type of search is often commissioned by companies wishing to make, use, import or sell generic goods, usually pharmaceuticals or base chemicals into a specific jurisdiction. It is similar to a Freedom to use search, although in most cases it is more specific. For example, the Patent is usually known, or specific subject matter such as the compound name is known. The search is often jurisdiction (country) dependent and will invariably be run several times over a number of years often as a watching service. This type of search will look at a specific compound or Patent number, equivalent patents filed around the world and their present Status.

A Product/process specifications search

This search type is probably the narrowest of all of the searching types and may be commissioned by a company wishing to find out more about a specific technology. It is often used to answer a specific technology problem, the solution to which may be found in a single patent. Such a search can often lead to a license or cross license between like-minded companies.

The above discussion on search types is aimed at providing an overview as to how searches are used. In all cases a good knowledge of the subject area is required, but equally important is that the searcher has a keen knowledge of patent databases and how they work. The interrelationship between patents, the bibliographic data contained in the databases and an in-depth understanding of Patent Classification is essential. Patent Searching requires that numerous sources are consulted and will almost certainly result in a large number of hits. An experienced searcher is able to distill the number of hits to those publications that are really relevant.

However, an understanding the different types of searches involved is a good first step for the search beginner.

Can you perform the search yourself?

Technically, Yes? If you have access to the internet, a good deal of time, patience and a strong belief in your ability to process large amounts of information there is no reason why you can’t perform your own search*.

Conducting one’s own search is often likened to a medical diagnosis. Just as you can diagnose why it is that someone is feeling ill, so too can you conduct a search. But, at the end of the exercise, would you come up with satisfactory results and would others make decisions based on your findings? An incomplete or inadequate search may lead to incorrect assumptions and costly mistakes.

Continuing with the medical analogy, it is also necessary to consider whether you have the experience and the time to carry out a search adequately and to remain with the search through to it’s completion? Searching is a learnt science. Just as a medical doctor takes years of learning and experience to know how to interpret a patient’s symptoms and is aware of the latest remedies to aid recovery, so too does an experienced patent searcher know how to formulate search strategies and have knowledge of, and access to, appropriate databases. Like the medical doctor the patent searcher must also analyse data patterns and terminology quickly in the often seemingly unstructured and complex world of patents.

Still keen to do your own search? Then lets press on. Be aware that Before you start you will need:

A clear idea about the purpose of the search. What is it that you want to achieve?
A sound knowledge of the invention, the advantages that the new product or process brings to the market and a keen understanding of how it works.
Knowledge of the terminology involved.
Access to the internet.
A good idea of how to build up basic search strings.
Access and a basic understanding of International Patent Class (IPC) and USPTO classification schemes to help you limit and target your results.
Access to relevant paper based records that are not (yet) online.
A list of the websites, commercial and technical on-line databases relevant to your product or process.
Knowledge of any relevant, printed, non-patent literature such as journals or technical publications.

Knowledge of the Invention

Apart from the due diligence type of search where an understanding of the problem to be solved is paramount, all other search types require a solid understanding of the invention before a meaningful search can be performed. It is important to understand what the inventive feature(s) of the alleged new product or process is/are and how the components work together to achieve a surprising result.

As an example, if you have developed a new process for making beer, it is likely that it is not the entire process that is new but only a small part of the process that is inventive. Most patents are granted for incremental advances over our existing fund of knowledge – and for this the inventor receives, as a reward for disclosing that advance to the public, an exclusive right in the form of a patent monopoly. The reward is only for the invention and not what is already known.

In the above example the inventor has found that near the beginning of the brewing process, and independent of temperature and pressure parameters, that by using certain ratios of chemicals the fermentation time and costs can be reduced considerably. In a searching environment it is essential to understand that it is not the entire process that is novel, but that a single step near the beginning of the process has an inventive component and to formulate search strategies accordingly. This will reduce and concentrate the number of documents requiring closer attention and will minimize irrelevancies or unwanted distractions. Of course, other parts of the process are essential in the making of beer, but these are known and not worthy of a patent grant. The salient point is that during any search (apart from a due diligence search as discussed previously) it is important to concentrate on the inventive features of the subject product or process. Common sense tells us this, but many an erroneous search has been made by concentrating on the whole rather than the part. Searching, especially when using a professional patent searching agency is very much a collaborative affair where the searcher will work in tandem with the inventor to sort the wheat from the chaff.

Terminology and key words are important

Patent documents are described primarily by words, although few mechanical inventions can be understood without the aid of figures. As such, you need to be familiar with the terminology applicable to your invention. Not only do you need to know the words that are used in a factory or work environment, but you also need to know how your competitors locally, nationally and internationally would describe the invention and its component parts.

For example, as a United States inventor you have invented a unique rubbish compacting process and wish to eventually patent the method in the Asia-Pacific area, you need to be aware that a search on trash will generally only find US derived Patents. In many countries the term rubbish is used and a search of both the terms rubbish and trash is needed. There are many similar examples where different terms are used in different geographical areas. The point is, that a search of all appropriate equivalent terms is necessary in order to proceed with confidence. Expanding the scenario, other key words that a searcher may also need to consider in such a search might be: detritus, garbage, refuse, compost, junk, waste, debris, scrap, litter, leftover, residue etc. In addition a searcher will also need to know how to describe the inventive part of the method such as compaction: compress, solidify, squash, condense, squeeze, pack together, press, reduce, constrict, tamp, wring, crush, mash, flatten, concentrate, constrict. In building a search string you will probably need to include the method by which the rubbish is to be compacted. For instance, by a screw mechanism. Search terms might include: turn, rotate, twist, coil, revolve, spin, wind, and spiral.

How to build up search strings

The previous example describes a new way of compacting rubbish using a screw mechanism. The search will probably begin by using a simple Boolean logic search query where a searcher might initially use a rather large key word search string such as:
(rubbish* or trash* or detrit*, garbag* or refuse* or compost* or junk*, or waste* or debris* or scrap* or litter* or leftover*) and (compaction* or compress* or solidif* or squash* or condens* or squeez* or pack* or press* or reduc* or constrict* or tamp* or wring* or crush* or mash* or flatten* or concentrate* or constrict*) and (screw* or turn* or rotat* or twist* or coil* or revolve* or spin* or wind* or spiral*).

While these variations in terminology may encompass many combinations, they will also find many documents that relate to other technical fields not relevant to the present search. Terms such as, press, spin, pack, wind can, and do, relate to many other unrelated areas of endeavour.

Rather than trawling through a morass of irrelevant documents from such a text search, a better methodology is to search for concepts rather than the key words themselves. This search involves using an internationally recognized categorical or classification system, usually in conjunction with a key word or key phrase search. The two most widely known and used systems are the International Patent Class (IPC) & USPTO Classification systems.

Most search strings contain both key words or phrases and IPC or USPTO components, often along with bibliographic data such as Inventor, Applicant or Assignee names and often using BOOLEAN operators such as NEAR and AND NOT. The Boolean operators AND, OR, NOT (or AND NOT), and NEAR tell search engines which keywords you want your results to include or exclude, and whether you require that your keywords appear close to each other.

Classification: International Patent Class (IPC), USPTO Classes & EPO Classification

An invaluable screening tool for limiting the number of records (hits) returned by a search invariably involves the use of search strings comprising the relevant International Patent Class (IPC) & USPTO Classes (and possibly other classification schemes. These Classification systems are complex hierarchical subject matter systems, which require a good deal of familiarity and expertise if they are to be used effectively. They are, however, logical in their makeup and can be used by the novice or casual searcher albeit with a large dose of both patience and perseverance.

Full Classification details and helpful tips on how to use patent classes can be found at these sites

With 45 million documents (at the time of publication of this article) in the EP database alone, you will likely come up with more results than you can manage by using key words alone in your search strings. Not only that, but the words that you use to describe your idea, may be different from the words used by your competitor who does not want you to find her invention.

Thus you must consider which are the important classes that you can use to find the needles in the haystack. As stated previously there are two authoritative classification systems widely used by the international patent community. These are the IPC system, which is used by the majority of offices outside of the USA, and the US classification systems. There is also the ECLA classification system used primarily by the European Patent Office (EPO). ECLA is a detailed classification system based on the IPC.

Please be aware though that the classification systems are continually changing and being updated, usually about every two to five years. To conduct a complete search it is often necessary to troll through different versions (editions) of the same classification system to be sure that you have covered all possible prior art areas. For Example, if you were looking at a new plastic or polymer a stroll through a sixth, seventh and eighth edition of the IPC might be necessary.

As technologies such as biotechnology, superconductors and SMS messaging systems develop and grow, so too do classification systems. Consequently, the classes and subclasses are continually being revised and new ones established in keeping with these new technologies. Old classes and subclasses also are abolished when rendered obsolete by technological advances. In addition, changes to classes and subclasses may result from an effort to streamline and update the definitions. Thus, the class that was attributed to patent documents classified back in 1994, may have changed. Thus if you are searching for a paper making technology, you may need to search not only in the IPC Class D21H17 but also in D21H3, its predecessor from an earlier edition of the IPC.

The primary reference sites for determining the correct classification for a particular subject matter are given above. Other relevant documents useful in formulating relevant search strategies are the IPC website, the US Manual of Classifications, and the Examiner Handbook to the US Patent Classification System.

Access to the Internet

For any individuals wishing to conduct their own search, the primary search tool is the Internet. A search of the Internet will get you started and may quite quickly cast doubts about an invention, but it will rarely tell the full story. A search on the Internet can fill the canvas but it will not provide the colour. Be warned - unless you have subscriber access to commercially maintained collections of technical documents (and knowledge of how to use them) you will find that you will need to perform searches in may different databases.

Most patent offices provide free access to the patent collections that they administer. For example, at
http://www.uspto.gov/ you are able to search the text of US patent documents back to 1971. A search European and many other patent documents can be made at http://www.european-patent-office.org/online/.
If you wish to search New Zealand patent abstracts you will then need to do a separate search at
http://www.iponz.govt.nz or to search Australian patents you may need to search several places, some of which may not yet be online.

Access to patent documents via the Internet will all have their own ways of interfacing the databases that support that interface. Wild cards, Boolean operators, locations on the screen, format of classes and other means for querying the database will all vary. To make the most of your search time and get the best results you should be familiar with the variable ways to query each database, and will often need to formulate separate queries for each search database searched. The results will then need to be reviewed and patent data details confirmed in a further search.

A professional searcher not only is familiar with how to use these interfaces, professional searchers also have access to tools and interfaces that allows them to query multiple databases simultaneously, thus saving time, reducing inaccuracies and undue duplication.

Access to paper records not available online

Not all patent information is available (yet) online. There are too many patent and non-patent publications both offline and online and offline to search all documents in all jurisdictions. A searcher must focus her time to find the most relevant document quickly. But, sometimes for certain technologies and for certain countries a search of the physical records available only on paper, microfiche, CD-ROM or on other physical media is the only way. Your professional Search agent will have reciprocal agreements with other search firms to meet this eventuality.

Patent Office Websites Providing Free Access to Patent Data

Many databases allow full text searching as well as a view of all or a selected number of the patent drawings. The search query may use Boolean operators, take a manual form or be simply by patent number, depending on the sophistication of the search protocols and indexing. The good news is that Patent offices around the world are now providing full searching capabilities so that millions of patent documents are viewable through the Internet.

A visit to the sites will reveal a wealth of information. Beware though, that each site is different in the search language it uses and in the fields available to be searched. The methodology used to store, score and display results also differs markedly between sights. As a searcher you will also need to consider the coverage of each of the databases, and where any gaps may exist. For example, the New Zealand Patent Office site allows patent abstracts back to 1979 to be searched on-line. Unlike the major Patent Office site full text searching of the patent documents is not possible.

Some of the more commonly used Free to use Patent databases are available from:

o http://www.uspto.gov/
o http://www.wipo.int/
o http://www.european-patent-office.org/online/
o http://www.ipaustralia.gov.au/
o http://www.ipos.gov.sg/main/index.html
o http://www.jpo.go.jp/
o http://patents1.ic.gc.ca/intro-e.html
o http://www.patent.gov.uk/
o http://www.iponz.govt.nz/

Decide which, if any, journals you need to search

A searcher should also be aware, especially for biotech, veterinary, pharmaceutical and superconductor patents that a search is not complete without searching technical papers and Scientific Journals.

Bibliography

For some further reading please see the references below:

o Using IDPAT to Manage Overlapping Patent Information
http://training.dialog.com/quick/ei/idpat/idpat1.html

o InventNET partnered with Patent Search International
http://www.inventnet.com/psearch.html

o Statement of confidentiality and non use
http://www.inventnet.com/psinda.html

o University of Southern California article about searching
http://www.library.ucsb.edu/istl/98-summer/article5.html

o 7-Step Strategy to searching - USPTO
http://www.uspto.gov/web/offices/ac/ido/ptdl/step7.htm

o Online searching tutorial
http://www.lib.utexas.edu/engin/patent-tutorial/myths.htm

o Patent Information Links
http://www.noenes.com/patentbookmarks.html

o Extensive searching manuals to show how to search esp@cenet
http://213.0.95.57/t_en/e_001_en.asp

o NPL searching
http://www.eevl.ac.uk/lit_searching.html

o The deep web – differences between searching databases (available via a search engine) and searching the fixed web (web pages)
http://library.albany.edu/internet/deepweb.html

Patentability/Infringement Search – A worked Example

A Singaporean inventor seeking to get just that little bit of extra performance out of his pogo stick has the idea of creating a pogo stick with a new kind of spring mechanism which he says will enable the pogo to bounce higher and longer than a conventional one.

The inventor came across the idea while he was watching an archery tournament. During the competition he couldn’t help but notice the tremendous amount of energy that was stored in a fiberglass bow just before release of the arrow. His idea is to use a fiberglass, bow type spring rather than the presently used steel coil spring. The inventor is especially enthusiastic about his idea and can see that it has the potential to make some money. After speaking to a friend (in confidence) he was advised to keep his idea secret, to record and date any experiments he may make and to perform a patentability search.

His search begins on the Internet where he immediately enters the search terms “bow spring pogo stick” into GoogleTM. Sadly, he quickly learns that of the reported 985 hits a number of them are extremely relevant. In particular, he learns that there is a pogo stick being marketed under the name BOWGO by ToyRobots Initiative. Apparently, the idea has a “patent pending” and is derived from technology designed for use on the legs used on certain robots.

Having ascertained very quickly that his idea, in it’s broadest context, is not patentable - that is, the idea of replacing a coil spring with a leaf or bow spring is not new, our inventor still has the feeling that his pogo stick has some novelty. He decides that he needs to investigate further. He also needs to determine whether he is free to use the idea so that he can sell his products in Singapore, Malaysia, Japan, China, and possibly, Australia, and New Zealand. In short, he needs to search deeper to get further information concerning the BOWGO patent, what the claims cover and whether the patent will impact on his potential markets. A search on GoogleTM proves futile and he soon realizes that he will need to look further afield.

Undaunted, our intrepid inventor turns to the major free patent databases and continues his quest. He logs on to the United States Patent Office site http://patft.uspto.gov/netahtml/search-bool.html and begins his search for the BOWGO patent. Unfortunately, the database reveals only 5 patents that reference the term BOWGO, and none of them relate to a pogo stick. Further, there are no Patents in the name of ToyRobots Initiative.

A number of attempts later using assorted Key words, a patent, US 6,558,297 in the name of the Carnegie Mellon University is uncovered. This patent was number 19 in a list of 128 hits and appears to be the patent previously alluded to as being “patent pending”. He notes that the information contained on the front page became publicly viewable on May 6, 2003.

The front page relates the following details.

United States Patent 6,558,297
Brown, Jr. , et al. May 6, 2003

Energy storage device used in locomotion machine

Abstract
“ A locomotion device, such as a pogo stick, having a housing having a first end portion and a second end portion, a plunger being slideably connected to the housing second end portion, the leaf spring also pivotally attached to the plunger. A method for locomoting using such a device is also disclosed.”

Inventors: Brown, Jr.; H. Benjamin (Pittsburgh, PA); Nourbakhsh; Illah R. (Pgh, PA); Zeglin; Garth John (Pittsburgh, PA)
Assignee: Carnegie Mellon University (Pittsburgh, PA)
Appl. No.: 627605
Filed: July 28, 2000Current U.S. Class: 482/77; 482/78; 482/112
Intern’l Class: A63B 026/00
Field of Search: 482/75-78

Our inventor having retrieved this data is now uncertain how to continue. The front page gives no information regarding either the status of the patent nor does it provide information on other countries, if any, into which an equivalent patent has been filed.

So far the search has taken him six hours and other than revealing that the document is of real interest he is unsure how to proceed. It is at this stage that he decides to seek professional advice. He commissions a search and provides details of his invention and what he has found to date.

His real interest now is in discovering where he is free to use the idea without risk of infringement and finding details giving the status of the BOWGO patent. He is now also becoming interested in how he might use the BOWGO patent and associated patents to improve on the idea contained there so that he cam build an even better pogo stick. If that is not possible he is also interested in licensing the idea but would like to get a feeling for the “state of the art” for committing himself.

In due course the search report arrives. The report is comprehensive and informs him that there are about 400 patents relating to pogo sticks since their invention in 1881. The report also indicates that the BOWGO patent is novel and refers to several related patents none of which teach of the idea of a fiberglass leaf spring pivotal about the top and bottom ends of the shaft of the pogo stick. A reading of the related art also indicates that the inventive step and industrial applicability criteria have also been met.

Importantly, the report also signals to our inventor that the applicant’s of US 6,558,297 have filed only two other equivalent applications, one of which is a PCT or WO application. To date the applicants have filed for protection into Australia only. The PCT application has a final date of 27 February 2004for Nationalising the application into other countries. The good news is that no equivalent (corresponding) Japanese, Singaporean, Malaysian, Chinese or New Zealand filing has been located. Our inventor is therefore free to make and sell his version of the pogo stick in these countries as Carnegie Mellon have chosen not to pursue their rights in these countries. The Search further reports that no United States or Australian Patent has yet been granted. The application is still being Examined it appears.

Search Criteria Used in the Worked Example:

Also detailed in the report are the corresponding Patent Classes and key words that have been searched and a listing of the more useful search strings used. The relevant Classes are:

USPTO Classification:

o 482/077: EXERCISE DEVICES; INVOLVING USER TRANSLATION OR PHYSICAL SIMULATION THEREOF; Bouncing device
o 267/033: SPRING DEVICES; VEHICLE; Compound; Coil and rubber type
o 267/153 SPRING DIVISIONS: Rubber
o 135/082: TENT, CANOPY, UMBRELLA, OR CANE; CANES, STICKS, CRUTCHES, AND WALKING AIDS; Tips; Shock absorbing

International Patent Classification (IPC):

o A63B025/08; HOPPING STICKS: e.g. Pogo Sticks
o A63B026/00; EXERCISE GROUPS

Key Words & Phrases:

pogo, stick, “pogo-stick”, spring, leaf, bow, “energy storage device”, “fibre reinforced composite”, FRC, frc, energy, store, elastic, “high performance”, pivot*, elliptical, arc*, toyrobots, “carnegie mellon”, bounc*, device, apparatus, locomot*, brown, nourbakhsh, zeglin.

Search strings used:

o ((carnegie) <in> PA) AND ((mellon) <in> PA) AND ((A63B025*|A63B026*) <in> IC) OR (482/77) = 9 hits
o (pogo) AND ((482077) <in> NC) OR ((A63B025/08 |A63B026*) <in> IC) = 37 hits
o ((((pogo) AND stick) AND spring) AND leaf) = 24 hits
o (Leaf or bow) AND spring AND pogo AND stick = 31 hits
o (((((pogo) AND stick) AND spring) AND (leaf OR bow OR arc* OR ellipt*))) = 100 hits
o (pogo) = 2,303 hits
o ((pogo) AND stick) = 310 hits
o (((pogo) AND stick) AND spring) = 221 hits
o (BOWGO) in ALL FIELDS = 9 hits
o ((toyrobot*) <in> PA) = NIL
o ((carnegie) <in> PA) AND ((mellon) <in> PA) = 798 hits
o (carnegie) AND (mellon) <in> ALL FIELDS = 2,971 hits
o (pogo) AND ((Brown) <in> IN) OR ((Nourbakhsh) <in> IC) OR (zeglin) = 21 hits.

Equivalents (corresponding Filings):

o Patent: WO0209822A3
Published on: 2002-04-11
Filed on: 2001-07-27
Title: ENERGY STORAGE DEVICE USED IN LOCOMOTION MACHINE

o Patent: WO0209822A2
Published on: 2002-02-07
Filed on: 2001-07-27
Title: ENERGY STORAGE DEVICE USED IN LOCOMOTION MACHINE

o Patent: US6558297
Published on: 2003-05-06
Filed on: 2000-07-28
Title: Energy storage device used in locomotion machine

o Patent: AU0177276A5
Published on: 2002-02-13
Filed on: 2001-07-27
Title: ENERGY STORAGE DEVICE USED IN LOCOMOTION MACHINE

The search report, apart from listing a number of relevant background documents, also revealed a later US application of more than passing interest. US 6,716,108 references the BOWGO application but expands on the idea by attaching a universal foot joint. The patentees contend that such a foot joint will allow the pogo stick to operate more effectively on uneven or broken surfaces and will also allow the user to more easily perform elaborate manoeuvres such as aerial spins. Yet again this gets our inventor thinking…perhaps if I….?

The Worked Search Example Shown above is fairly typical of an uncomplicated search. The search began as what seems a relatively straight patentability search, and quickly turned into an infringement search, a freedom to use search, a world wide patent status search, and a product specification search. The search also found many related patents that could be used to expand and improve on the original idea.
If you have any comments on the above, or any queries relating to searching please e-mail icockburn@piperpat.com

On-Line Patent Searching – Are Search Statements Submitted to Patent Databases Public Disclosure of an Invention? - A Cautionary Tale.

To search or not to search, is that the question? Or is it something else?

Perhaps the questions that should be asked are: Can search strings used during an on-line search be considered as a disclosure sufficient to invalidate a patent? How safe are your on-line searches from prying eyes? And, how accessible are your searches and search strings to public view? How safe are your saved searches?

In recent years the world has been given new terms such as hacking, electronic eavesdropping, sniffing, IP spoofing, system snooping and phishing all of which relate to the unauthorized acquisition of some form of digital communication. Electronic eavesdropping is defined as the intentional surveillance of data – via voice, fax, e-mail, mobile telephones, computer messaging etc, often for nefarious purposes, whereby an eavesdropper will intercept and log the message exchange between a client and a server.

Sadly, the interaction of the searcher and the major patent databases is conducted in an insecure environment and unscrupulous visitors to those sights are able to monitor and track that interaction. The phenomenon whereby unauthorized information concerning an individual or a company is purloined is increasing at a rate, which is proportional to our access to new digital technologies and on-line databases. The esoteric world of patents and intangible assets is not immune to this phenomenon and information, especially competitive intelligence about rival companies’ technology strategies, has immense value.

The ability of hackers to intercept search strings on unsecured sites and therefore reveal sensitive information is a reality. There is also a very real danger that if you provide a full search statement to a publicly available database that there is a substantial risk that that search statement will, for all intents and purposes, be a publication of the invention. If the search statement contains details of inventive subject matter, submitting that search statement to a site such as the USPTO, EPO or PCT search sites might be fatal to your ability to obtain and maintain valid patent rights. At the very least, it might provide critically sensitive data about your companies future direction - data that can be used to reduce product-to-market lead times or negate hard won technology frontier advantages forged through innovative R & D.

Patents are all about protecting and commercializing technical information embedded in new products and processes. Any risk to those patent assets should be defended. Given the above, that search strings may fall into the public domain and cause future patentability problems, possibly resulting in the invalidity of a patent, and without relying on grace period provisions, perhaps the best solution is to file a Provisional Application first and search later.

So, consider the advantages that the early filing of a robust provisional patent offers.
o It will secure your ability to gain full patent rights.
o It will negate damage to a patent asset due to patentability issues consequent to a search.
o It will reinforce commercial value of R & D to researchers.
o It will reduce the threat of employee exploitation or outside misappropriation.

If you have any thoughts, comments or additions to the above discussion please e-mail icockburn@piperpat.com to begin a dialogue or consult an IP professional to determine best fit patent strategies for your firm.

Patent Statistics – How are they used?

A patent is a technical document whereby an inventor or assignee seeks to protect information relating to a new product or process. In return for an exclusive monopoly the inventor is required to disclose details describing how the invention is to be performed. In most countries the patent is published automatically 18 months from the application date. Publication of the invention allows others knowledge of the invention which they can use for further development. Thus the patent both rewards the inventor for his innovation and helps to transfer technology from one firm to another and from country to country.
The number of Patents applied for in the period 1990 –2000 showed a sharp increase as companies, especially those in the biotechnology and Information Technology fields, began to recognize the value of the spin-offs of their research and sought more aggressive ways to protect their inventions. Coinciding with these new technology frontiers there was also an increased awareness of Patents by Corporate Management as a means to commercially exploit innovation by providing protection from competitors, freedom to continue to design flow-on products, lucrative licensing and cross-licensing opportunities and as a powerful litigation tool.
As awareness of Patents increased so too did Patent statistics become a more interesting subject in the boardroom and at the public policy making level. CEO’s and economists independently making the connection that patent data could be used:
o As an indicator of future company or country competitiveness.
o To identify new technology fields worth exploring.
o To indicate likely gaps in a market place.
o As a track on competitors and rivals.
o Highlight strengths and weaknesses of IP stocks.
o To provide an early warning of changes in a market place or, to make predictions as to where a market place will be in two to three years.
o Patent Offices and Patent Agents also use Patent data to forecast future workloads and to plan future fees and budgets.
But these are not the only uses for patent statistics. Economists and Government policy makers use patent filing data to measure a country’s or an institute’s inventive performance relative to others. Decisions on how best to spend tax-payer funding for Government researchers and to decide which technology areas are likely to offer the greatest returns can be based on indicators derived from a statistical analysis of Patent filings. Important decisions about where to conduct research and what sorts of knowledge sharing would most benefit an economy can also be made.

You can learn more about Patent statistics on the following sites:
o www.oecd.org/sti/ipr-statistics
o www.nber.org/patents
o www.wipo.int/ipstats/en/
o www.uspto.gov/web/patents/stats.htm
o www.jpo.go.jp/torikumi_e/kokusai_e/tws/sr.htm
o www.european-patent-office.org/inpadoc/statistics_dwld.htm

OECD-WIPO Workshop on the Use of Patent Statistics held 11-12 October 2004 - Some Interesting Patent Statistics
The World Intellectual Property Organization (WIPO) and the Organisation for Economic Co-operation and Development (OECD) recently held a Workshop on “The Use of Patent Statistics. The Workshop was held on 11 and 12 October, 2004 in Geneva, Switzerland and was a follow-up to the 2003 WIPO-OECD Workshop on Statistics in the Patent Field.
This workshop was addressed by Keynote speakers, including Bronwyn Hall Professor of Economics at Berkeley University, California, Akira Goto Professor of Economic Engineering et al from the University of Tokyo, Dietmar Harhoff, University of Munich and Hao Zhou a statistical Analyst employed at WIPO. The attendees were mainly economists and statisticians along with a few IP specialists from Patent Offices and Attorney Firms. The workshop loosely covered the following topics:
o Spillovers and diffusion of knowledge.
o Value of patents.
o New ways of using patent data to address policy issues.
o Forecasting patent data.
o Patent statistics and indicators – future developments.

Full details of the workshop can be found at www.oecd.org/document/12/0,2340,en_2649_201185_33654092_1_1_1_1,00.html

Some of the more interesting Statistics coming out of the workshop were:
PCT Statistics:
o Patents are used by only 10% companies to ascertain their “stock of knowledge” and to compare it to competitors. A firm’s stock of knowledge is proportional to its productivity. Those firms with the most patents are the most productive and most likely to innovate.
o 65% of PCT filings come from three countries, the USA (39%), Japan (12%) and Germany (14%).
o US-PCT filings rose steadily from 1990-2001, but the rate of growth tailed dramatically after March 2001. US-PCT filings now remain steady at 3,500 applications per year.
o JP-PCT filings show consistent growth from 1990. JP filings are expected to reach ~ 18,000 in 2004. There has been no slow down in JP-PCT Filings.
o All PCT filings are growing at about 4% annually. 120,000 PCT applications are forecast for 2004.
o A 5% decline in AU-PCT filings is expected in 2004.
o PCT filings originating from Korea, China and India are growing rapidly. The number of Filings from Korea has doubled since 2000.

European Statistics

o At The EPO 38% of applications are lodged by 1% of applicants.
o Two-thirds of all applicants are SME’s (250 employees or less) yet they lodge only 25% of the applications.
o The average value of a granted European Patent is 500,000 Euros.
o In 2003, 60,000 European Patents were granted.
o 36% of all European Patents are not used. Although the % of unused Patents drops to 20% for SME’s.
o 18% of Patents are used to form a new company, often followed by on licensing.

Citation and Other Statistics

o More valuable Patents are cited more – both backward and forward citations.
o ~ 25% of US derived Patents receive no citations.
o USPTO averaged 13 Patents and 3 non-Patents cited per Application
o EPO averaged 4 Patents and 1 non-Patent per Application
o WIPO averaged 4 Patents and 1 non-Patent per Application.
o 60% of all US application reach Grant.
o 46% of Korean derived US applications reach Grant.

If you have any thoughts, comments or additions to the above discussion please e-mail icockburn@piperpat.com to begin a dialogue or consult an IP professional to determine best fit patent strategies for your firm.

Disclaimer: PIPERS endeavours to be as accurate as possible when preparing these articles and has taken all reasonable steps to ensure that the information contained herein is accurate. The accuracy of the article is limited by the accuracy of the data sources from which it is taken. The contents of this report are for purposes of information only. If the contents of this report require further consideration please seek the advice of an IP professional.
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