Bottom Line

Summary:

Bottom line it.

Details:

My nature is to study details, and that’s one reason I enjoy patent analysis work so much. Being a detective is exciting, and it’s fun to delve deeply into a patent under review. As described in another post about quick patent analysis techniques, there are numerous considerations to be made for a patent under review, and each subsequent phase of review entails analyzing additional aspects. Because of this, there is often a lot to say about how one reaches a conclusion and a recommendation for a given patent. Clients often provide a numeric rating system for assets so that they can more easily determine the best patents, filtering out those without as much potential. But even when they don’t use a rating system, clients appreciate a high-level summary of the conclusion and recommendation, and sometimes they do not wish to delve into the details as to why an analyst made the conclusion. So I recommend for verbal feedback to first provide a very short bottom-lined summary, and only go into the associated background details upon request. Additionally, for written communication, give the overarching bottom line up front (e.g., at the top of an email or on the far left of a table), and then subsequently provide supporting details.

 

Forward Citations as a Patent Relevance Metric

For a given patent (or patent application), a forward citation is another patent document’s citation back to that given earlier patent (from the perspective of the given patent). For a patent application, the associated patent applicant(s) and patent examiner(s) must disclose and cite existing references that may be material to the pending patent application, including patent document references. A citation can imply that the cited reference anticipates or renders obvious one or more claims of the pending application, or it may just denote that the cited reference discloses aspects related to a technology area associated with the pending application.

I have often heard from patent professionals that the number of forward citations that a given patent has is a strong indication of its relevance. In my experience, the number of forward citations metric often indicates something other than the relevance of associated claims within that patent document. First, one must consider that more-recently-issued patents will not have had much opportunity to be cited yet, which means that comparisons of forward citation metrics need to be limited to patents issued within a relatively narrow time frame. Second, with a duty to disclose, some patent applicants and practitioners cite many more references than might be needed or expected, and as such will include several patent references where the cited patent is not of particular relevance to the pending patent application. Next, in my experience, patent examiners will find “favorite” patent documents that have a large omnibus specification and describe well the state of the art at the time of application filing, but citations of these patent references indicate nothing about allowed/issued claims of these references. In fact, patent examiners do not normally specifically point to claims themselves, but to patent specifications and drawings, which means that there is no qualitative assessment of the claims themselves for a citation. Because the claims define the scope and value of an associated patent, and since the examiner is not referring to the claims in citations, one cannot read much of an indication of relevance into such a citation. Last, some large corporate patent filers have large collections of their own references in various technology areas to include in Information Disclosure Statements (IDS), thereby citing many of their own patent documents without specific regard to the actual relevance of these citations.

For these reasons, I always take the metric of the number of forward citations with a healthy pinch of skepticism — there is no substitute for actual claim analysis by an expert in the associated technology area. One numeric metric I find much more often indicative of relative patent quality (within a technology area and particularly within a patent family) is the number of words in independent claims — I’ll leave this discussion for another day.

For more information and perspectives, see:

• AcclaimIP’s description and caveats for using and understanding forward citations.
• Jackie Hutter’s real-life example for not overly relying on the number of forward citations.

I welcome your insights.

Google search tools for patent searching and analysis

When performing patent-related searches and/or analyses, I often leverage Google search tools to facilitate my work. A few examples are provided below, and I welcome others’ insight into other helpful search utilities. I should note that I sometimes also use Microsoft’s Bing search application, particularly because I earn Bing Rewards, but Google does have some specific patent-related utilities that Bing and other publicly-available and free search applications lack.

Google Images

When analyzing a patent and searching for either utilization or related art for inventive embodiments that include aspects that can be seen, such as mechanical designs or computer user interfaces, Google’s Images search results often are handy. A picture truly can be worth a thousand words, if not more. For example, I recently filed a patent application for an invention that my wife and I created for a unique drinking vessel. As part of my patentability assessment, I used Google Images to search for existing beer stein designs that might already disclose what we believed likely to be novel. So I searched using Google with the phrase “beer stein” (among many others of course), then I selected the “Images” link in the results — an example screen shot is shown below (from google.com).

Google Images

Date Range

Additionally, when performing patent searches, normally there is a date range of interest. For example, for validity or patentability searches, a priority date is used to limit resulting references to those that precede the priority date of relevance. Google provides for date range selection in various different places, such as through selection of a “Search tools” button in a results banner. From there, a searcher may select a date or time range such as “Past hour”, “Past 24 hours”, “Past week”, etc. Normally the choice of interest is “Custom range…” (highlighted in the screen shot below from google.com). So for example, for a priority date of February 3, 2003, the “From” date field may be left blank, and “2/3/2003″ may be entered for the “To” date field. This causes Google to only display results for references published before February 3, 2003.

Google Date/Time Range

Google Custom Date Range

Site

When searching for potential patent claim utilization, clients often request specific target companies’ products. In those cases, the strongest references are those provided by a target company itself. Therefore, limiting search results to those provided by the target company is often helpful, and this can be done through use of a additional “site:” parameter. For example, to limit search results to those from “ACME Company, Inc.”, whose main domain is “acmeinc.com”, enter normal search terms plus additionally include “site:acmeinc.com”.

Advanced Search

Google also provides several other parameters that a searcher can use to limit results — these can be found in “Advanced Search” (https://www.google.com/advanced_search). The Advanced Search can also be accessed through selection of the gear icon on a normal search results page. Results can be further limited, for example, through specifying explicit search term combinations, words to exclude, languages, etc. Screen shots are sourced from https://google.com and https://www.google.com/advanced_search:

Google Settings

Google Advanced Search

Prior Art Finder

And of course let’s not forget Google’s Prior Art Finder. For a given patent, Google will extract key terms and search for various types of references using those search terms where the references were published before the patent’s priority date. Additionally, a user can modify, remove, and add search terms and/or change the search’s date range. A key advantage of Google searches is that common synonyms for each search term are also used in the searches, and Google will sometimes leverage synonyms that a searcher may not have envisioned when creating a search plan. References can be sourced from scholarly references, other patent documents, books, the Web, people, or the top 10 from these groups. The example Prior Art Finder screen shot below is for US patent 6368227 for a method of swinging on a swing (https://www.google.com/patents/related/US6368227):

Google Prior Art Finder

Considering Kind Codes when Analyzing non-US Patents

In my patent analysis work, I am sometimes asked to review patent documents from jurisdictions other than the US, such as from Europe (EP) and the United Kingdom (GB).

A common error I have encountered when analysts in the US look at patent documents from other jurisdictions is that they review the wrong version of a patent document, thereby wasting their own and their client’s time. Counter to the USPTO’s practice of separate pre-grant patent application publication and granted patent numbering schemes (11-digit and 7-digit, respectively), many other jurisdictions use the same number for both published patent applications and granted patents. The way that these other jurisdictions’ patent offices (such as the EPO and UK IPO) represent the difference in the patent document identifier is through the use of a “kind-of-document code”, which is a one- or two-character suffix that follows the patent document number — e.g., GB2172127A vs GB2172127B.

For another example, EP patent applications are represented with a trailing “A” kind code, while granted EP patents are represented with a trailing “B” kind code. For EP patent documents, an “A1″ indicates a European patent application published with a European search report, and a ”B1″ indicates a “European patent specification (granted patent)”. There are several other kind codes for each of the “A” and “B” kind code sets — for more details, see the EPO’s kind code help page. The USPTO has its own comparable US kind code list, and the World Intellectual Property Organization (WIPO) additionally has a comprehensive guide to patent kind codes.

The specific error that I have witnessed from a few other patent analysts is that they spend time reviewing the claim set of a published GB patent application (i.e., kind code “A”)  instead of reviewing the claim set of the associated granted GB patent (i.e., kind code “B”). Obviously analysis on an originally-filed or still-pending set of claims is likely to not be helpful for a client because the client wants to know how relevant the issued claims are, and the issued claims are very likely to represent some, if not many, modifications from the original claim set. The claims normally differ between these two, potentially substantially, so when analysts map or otherwise analyze “A” claims the work is probably incomplete and/or inaccurate. Part of the problem is that search tools such as Espacenet default to showing the “A” claims, even when the “B” version has been selected. To get to the “B” version of the claims, one must explicitly select such, and I have never been able to find the “B” claims in textual format — I can only find them in a PDF image, including at the UK IPO, which means that I have to OCR them and/or type them in when filling out reviews. I welcome someone to point me to a service through which I can easily obtain the “B” claims in textual format. See the example screen shot below showing selection of the “B” kind code of a particular granted GB patent GB2172127, with the “A” kind code claims displayed instead — note that the indication of this is rather subtle (source: http://worldwide.espacenet.com/publicationDetails/claims?CC=GB&NR=2172127B&KC=B&FT=D&ND=4&date=19881012&DB=EPODOC&locale=en_EP, retrieved Feb 15, 2013):

GB patent kind code “A” claims

Therefore, when performing patent analysis on non-US patents, it’s best to understand and leverage the kind code to ensure that you are reviewing the appropriate set of claims.

Quick Patent Analysis Techniques

During my years of patent analysis, I have assembled and recorded various processes, and I continue to tweak these as I learn new things, see new perspectives, and as case law impacts claim interpretation. As a patent agent familiar with discovery considerations, I also have some additional approaches with those in mind.

Patent analysis can come in many forms, and clients considering cost/benefit tradeoffs will ask for reviews of different scope and duration — e.g., 5-minute reviews, more detailed 30-minute analyses, 1-2 hour assessments, and multi-hour claim charts. Each of these reviews is typically performed at a different stage of an overall review process, with only the highest-rated patent assets making it all the way to a claim chart stage.  I am often asked by various clients to perform a “quick” ~30-60-minute review of a patent, in which case I typically take the following high-level approach for assessment and feedback. Longer reviews entail more time spent on some of the areas analyzed in a review of an hour or less, and they also often include additional steps such as a patent family member search and a quick litigation search (using my Patent Claims Tree Google Chrome extension).

• Look to capture at least the following overarching aspects in review feedback which would assist a reader, even without the patent in hand, understand:

1. What a given patent is about in general
2. Where novelty lies — i.e., what is apparently unique about the claims
3. What claim might be best for licensing opportunities
4. Apparent claim breadth
5. How difficult detection might be, and what it would involve
6. The probability of use of the patented claims

• Leave room for uncertainty because there is not yet sufficient time to conclusively reach a position. So, for example, I say “appears to be” instead of “is” and use adverbs such as “might” and “potentially”. Some clients actually prefer a more confident stance, even for a short review such as this type, so the actual approach should reflect the client request.
• If potential issues such as means-plus-function (MPF) language, divided utilization, or related art are found that might impact value, note these.
• Note key narrowing claim limitations which might limit utilization.
• If there are recognized family members in the same analysis set, point this out (with this short of an analysis per patent, I do not proactively look for family members).
• Use my “Patent Claims Tree” Chrome extension to take a glance at details on the claims (word count, MPF language, claim types, etc.) and the PDF: https://chrome.google.com/webstore/detail/pdlplehheooenjcoaicokcpipdlodmfn
• Consider specifically-requested targets, if any.
• Review the potential market and the associated market size, and provide potential target products/companies.
• Avoid saying anything disparaging about the patent, the assignee, or targets.
• Consider future utilization (if notably considered to have potential to greatly increase or decrease).
• In determining the highest-rated claim, look not only at relative word count and breadth, but also the type of claim. There is a lot to consider in this regard, so I usually only give this only a quick thought in this short of a review. There are excellent books, such as “US Patent Opinions and Evaluations”, that cover these considerations in detail, and I use this particular book as a reference when delving in more deeply, such as in longer later-stage reviews.
• Clients often ask for a score or rating according to their own predefined criteria, so provide this score/rating/ranking per reviewed patent based on the criteria and the findings from the above steps.
• Recommend next steps, if not already implied or provided elsewhere.
• Some clients also request technology categorization, classification, and/or keywords to facilitate creation of logical groups or portfolios, so also provide these as required.

Patent News Feeds Android app

I have released an update to an Android mobile application RSS and Twitter feed reader for patent-related news from several of the most popular patent and intellectual property (IP) blogs. This Android app is provided and maintained for free by my patent analysis company Wolf Mountain IP (via Wolf Mountain Apps).

For more details on the application, see the Google Play page for “Patent News Feeds”.

Patent Analyst Venn diagram

Below is a Venn diagram I created in order to highlight some of the various differences in skills, knowledge, background, personality, and common responsibilities between a patent analyst role and a few related professions such as patent attorney, engineer/scientist, and patent paralegal.  The diagram is neither scientific nor comprehensive, and some overlaps are likely skewed percentage-wise. Also, of course some folks have multiple roles/skills (e.g., a patent paralegal with an engineering degree) – but the diagram is nonetheless fairly representative.  The point of view is from a patent analyst perspective, though personally I perform tasks as both a patent analyst and a registered US patent agent.  Additionally, differences exist between corporate and law firm professionals and between employees at larger versus smaller entities.

Example differences and overlaps:

1. A patent analyst needs to have a solid mix of technical expertise and patent knowledge and should also have an up-to-date awareness of the market and vendors in one or more technology areas, and a patent analyst needs to be able to perform detailed investigations to determine mappings of patent claims to corresponding products/solutions such as through reverse-engineering, product utilization, and/or documentation review.

2. A patent analyst and a patent attorney both need to understand the fundamentals of patents, such as patenting requirements, relevant dates, claim scope and language.  Both may be required to perform patent-related searches such as patentability, freedom to operate, invalidity, state-of-the-art, etc., and may be asked to review the potential relevance of a patented claim on one or more target products/solutions.

3. A patent analyst, a patent attorney, and an engineer/scientist each needs to have a solid background and understanding of one or more technology areas.  A patent practitioner, such as a patent attorney or a patent agent, must possess sufficient scientific and technical training such as having earned a Bachelor’s degree in a recognized technical subject.

4. A patent analyst and an engineer/scientist must both have a solid understanding of one or more technology areas.

5. A patent analyst, a patent attorney, and a patent paralegal must each have a fundamental understanding of patents, such as patenting requirements and relevant dates, though a patent paralegal does not need to understand the intricacies of claim language, and a patent analyst does not need to know the details of interaction with a patent office.

6. An engineer/scientist usually also has responsibility to manage and/or design and/or develop a technical product or solution.

7. A patent attorney additionally has a law degree and has passed a territorial law bar exam along with a patent bar exam and can represent clients in court and with the USPTO, and a patent attorney can provide legal opinions (such as patent non-infringement or invalidity).  Note that in the US a patent agent has passed the USPTO patent bar exam and can represent clients for patent application prosecution work with the USPTO, but cannot provide any other legal representation or provide legal opinions.  A patent attorney (or patent agent) can draft, file, and prosecute patent applications.

8. A patent attorney and a patent paralegal must both have a sufficient understanding of the main bureaucratic aspects of patent prosecution with one or more patent offices.

9. A patent paralegal often has a more detailed knowledge of the finer details associated with interaction with patents offices than might a patent attorney, and a patent paralegal works under the supervision of a patent attorney to assist with preparing and filing necessary patent-related documents.  A patent paralegal often possesses detailed knowledge of docketing software used to track patent assets.