EXAMINER SEARCHING (through the looking glass)

Transcription

1 EXAMINER SEARCHING (through the looking glass) Dominic DeMarco Managing Director DeMarco Intellectual Property, LLC Patent Research for Patent Attorneys - All rights reserved

2 2 Who is this guy talking to us? Dominic DeMarco Registered US Patent Agent (#49,015) BS in Chemical Engineering from the University of Virginia Full time patent searcher since 1997 (20 years) Started DeMarco IP in 2007 The company has grown by double digits for ten straight years Served on the Board of Directors of PIUG (the Patent Information Users Group) Trade group for patent searchers Lead instructor for the PIUG Patent Searching Fundamentals and Fundamentals of FTO Searching Invited by the USPTO to teach a recurring search course based upon gap analysis to US examiners Invited by WIPO to teach patent search courses all over the world

3 Patent Information Users Group, Inc. The International Society for Patent Information Professionals What is PIUG? Non-profit organization for individuals with professional, scientific or technical interest in patent information Mission Statement To support, assist, improve and enhance the success of patent information professionals through leadership, education, communication, advocacy and networking. Promote and improve the retrieval, analysis and dissemination of patent information. Patent Information Users Group, Inc. 3

4 Brief History Key Events PIUG was born PIUG 10 th Anniversary 1 st Multi-day Annual Conf 1 st PIUG Brian Stockdale Award PIUG 20 th Anniversary Initiated CEPIUG partnership Initiated WIPO, PDG Partnerships Started Chinese Subchapter 1 st Australian Elected PIUG Chair PIUG Brochures in Chinese & English PIUG granted WIPO Observer Status st PIUG Northeast New Brunswick, New Jersey PIUG incorporated, leading to Board of Directors 1 st PIUG Biotech Boston PIUG Education & Training Task Force created PIUG Wiki Forum replaced discussion list Established partnerships with AIIP, LES and AALL PIUG 25 th Anniversary 1 st PIUG Stu Kaback Business Impact Award PIUG Participated in WIPO Legal Status Task Force A full list of PIUG Milestones is available Patent Information Users Group, Inc. 4

5 PIUG Members By Affiliation Type Current Membership as of August 15, 2017 Patent Offices 1% Academic 6% Other 3% Legal 9 % Consulting 21 % Corporate 38 % Applications 22 % Patent Information Users Group, Inc. 5

6 PIUG Members By Country Current Membership as of August 15, 2017 Outside US = 155 Members ~ 32 % USA = 374 Members 324 US Members US Members ~ 72 = % 384 ~ 68% 72% 329 US Members ~ 68% Patent Information Users Group, Inc. 6

7 Users ask Does anyone know? and engage in what works, what doesn t, tips on how to fix problems Users directly contribute to Forums, etc. Patent Offices communicate proposals and activities Vendors present products and services information Employers post job openings to target audience Knowledge base of useful patent information Members-Only site PIUG Wiki Forum Learning & Networking Opportunities Patent Information Users Group, Inc. 7

8 PIUG Conferences/Events Annual Conference (3 Days) April/May of each year (before June 1) East Coast, Midwest, or West Coast (USA) Exhibits and Pre- and Post-conference workshops Northeast USA Regional Conference (1 Day) September/October of each year New Jersey (USA) Exhibits and Pre- and Post-conference workshops Biotechnology Conference (1 Day) February of each year Boston, MA or West Coast (USA) Exhibits and Pre- and Post-conference workshops PIUG Asia Events PIAC Conference With China (September) PATINEX Conference Seoul, S.Korea (September) Patent Info Fair & Conference Tokyo, Japan (November) Patent Information Users Group, Inc. 8

9 9 The first disclaimer: Patent Examiners search patents for different reasons than we on the outside search patents. They are decision makers and are strongly incentivized to stop a search when a decision may be made.

10 10 Discussion targets: 1) Accessing Examiner Search Logic 2) Examiner Database Analysis 3) Sample Examiner Strategy Analysis 4) General Examiner Strategy Analysis We are not reviewing the Reason for Allowance, Applicant Arguments, or Examiner Rejections. These are important topics for a much longer day of conversations.

11 11 1) Accessing Examiner Search Logic: Available via Public PAIR for most issued Patents and published applications (PG-Pubs) since

12 12 A randomly selected high profile patent

13 Luther, I apologize. I am not picking on you on purpose. 13

14 14

15 15 Automated bite at the apple

16 16 Manual first bite at the apple

17 17 Manual second bite at the apple

18 18 Manual third bite at the apple

19 19 Summarizing the bites at the apple

20 20 2) Examiner Automated Search Tool (EAST) Database Analysis US-PGPUB US Pre-Grant Publications (full text, ) USPAT Issued US Patents ( ) USOCR OCR scanned images for US Patents ( ) EPO Abstracts of select European documents (19??-2010) CH- 78, DE- 81, EP- 78, FR- 84, GB- 00, and WO- 78 JPO Abstracts of Japanese A documents ( ) FPRS Abstracts of most non-us documents ( ) Derwent Derwent World Patent Index (1960 s-2017) UPAD Unpublished US Patent Applications ( )

21 21 US-PGPUB US Pre-Grant Publications ~5,000,000 Records Applications published at 18 months Full Text Searchable Text sections have numbered paragraphs No Backwards citation data Static Draft Claims published at 18 months Often missing Assignee (Owner) information Many Applications not published per Applicant requests for USonly oriented technologies

22 22 USPAT Issued US Patents ~10,000,000 Records Full Text Searchable Full US Citation Data No non-us Citation Data Free text must be manually identified by page, column, and line No text searching before 1976

23 23 US-OCR Optical Character Recognition ~4,000,000 Records Full text searchable Scanned during the 1990 s Generally considered too inaccurate to rely upon or use No Citation Data

24 24 EPO Abstracts of Select European Patent Filings For DE publications: For EP publications: For FR publications: For GB publications: 19??-2010 For WO publications: ~3,600,000 Records No updates since 2010 Abstracts only No Family grouping No Citation data

25 25 JPO Abstracts of Japanese Patent Filings ,800,000 Records Applications only (A kind code) No citation data No F term or F index searching No updates during 2014, 2015, 2016! Has been fixed in 2017

26 26 FPRS Foreign Patents ,000,000 Records Bulk upload of data from the EPO DOCDB file Uploaded January 1, 2014 Abstracts only No citation data Limited Family Grouping No Chinese images Generally considered too broken to be used effectively

27 27 Derwent World Patent Index 1960 s ,500,000 Records Human generated Abstracts from Derwent Derwent Families do not align with other families Duplicate records for all US art No citation data Abstracts only Clipped Images (single low resolution thumbnail) Uploaded January 1, 2009 Most examiners ignore

28 28 UPAD Unpublished Patent Application Data ?? Records Generally not used by examiners No updates since 2010

29 29 The big things you should note: Over 110,000,000 Records in the System Full text searching is available only for US patents and US publications. (No full text of PCT filings.) Abstract-only searching is available for non-us documents. Full citation data is only available for issued US patents Bonus: The DWPI and FPRS databases only became available to US Examiners in the past few years. Most have no idea how to efficiently use them!

30 30 Commands Available to Examiners (Page 1) Truncation $ = Unlimited characters $1 = Zero or 1 character Proximity Operators: (in order of execution) Adj# = Within # words, order specific (default is 1) Near# = Within # words (default is 1) With = Within a single sentence Same = Within a single paragraph Section Operators: (can be used in combination) Title =.ti. Abstract =.ab. Title or Abstract =.ti,ab. Claims =.clm.

31 31 Commands Available to Examiners (Page 2) Classification Operators: CPC Classification =.cpc. IPC Classification =.ipc. or.ipcr. US Classification =.ccls. Other Common Operators: Assignee =.as. or.asn. Inventor =.in. or.inv. Publication Number =.pn. or.did. Application Date Publication Date There are many others, but this is a listing of the common ones.

32 32 3) Examiner Strategy Analysis With all due respect to Mr. Luther Behringer, an Assistant Examiner, and Mr. Carl Layno, the signatory Examiner, we will review the publicly available search history for US 8,000,000. This is what you can do for any US patent or application of particular interest available via Public PAIR (18 months after filing).

33 33 The second disclaimer: The validity of this patent is not being questioned. It is merely a guinea pig to demonstrate the analysis of Examiner search logic that may be done. No search is perfect. All searches are a balance of inclusion and exclusion.

34 34 The Examiner only cited US documents. Note the varied classification of the cited documents and their dates!

35 35 Ref #s (US only) Automated bite at the apple Score assigned by the Semantic tool None of these references were used by the Examiner. The Examiner has no control of this automated process and must review the listed references.

36 36 Manual first bite at the apple 1 2 1) command accidentally eliminates pre-1976 references which do not have an application date field. 2) Notice the database selection discrepancy. Derwent has been deactivated which limits the searching to US documents only.

37 37 Manual first bite at the apple Not likely Likely reviewed Likely reviewed 3) Time Stamps 3) Gaps between time stamps can help you determine which sets of references have been reviewed.

38 38 Manual third bite at the apple 4) Changed databases again ) Queries not reviewed based upon the continual strategy refinement. Removed feedback and limited to back adj telemetry. ***Less than 500 US patents or PG-Pubs use this term!!!

39 39 Summarizing the bites at the apple 6 6) There are over 4,000 references in this range of Subclasses when crossed No documentation of having performed this date limitation or crossing these Subclasses with key word limitations is shown in the search history. Do you think they were reviewed in their entirety?

40 40 4) General Examiner Strategy Analysis No more picking on Luther! I ve reviewed thousands of US file histories over the years. There are some generalities that can be made with regard to the manner in which US Examiners search patents and utilize the databases available to them. As with all generalities, this does not apply to every Examiner. Some are fantastic patent searchers.

41 41 Database Choices (part 1) Quote-Unquote I have received from more than one Examiner: I turn off the foreign databases because they give me too much stuff to go through. In reviewing several thousand file histories, in less than 0.1% of these cases has an Examiner utilized the International Patent Classification system (IPC).

42 42 Database Choices (part 2) Examiners are expected to search the patent literature and also expected to search non-patent literature (NPL). The searching of NPL is often outsourced to in-house search experts within the USPTO (employees via STIC and/or contractors via ASRC). The Examiner with their intimate knowledge of the case and the technology is often not the person performing the NPL search if and when one is done. STIC = Science and Technical Information Center ASRC = Arctic Slope Regional Corporation

43 43 Patent Section Limitations The other way Examiners eliminate the opportunity for foreign stuff to clutter their queries is by never limiting their searching to bibliographic information (Titles and Abstracts:.ti,ab.) A US full text document has approximately 10,000 words. A non-us abstract has approximately 100 words. Which do you think is more likely to be found when a search for A and B and C and D is performed? Does that mean the non-us documents are not relevant? This also reduces the utility of the Derwent database and their value-added abstracting.

44 44 Field of Classification Search It is commonly accepted that an Examiner will document a Field of Classification Search if text searching encompassed those subclasses. This means that these subclasses were probably not reviewed in their entirety.

45 45 Proximity Operator Usage Examiners preferentially search broad to narrow. To narrow, they add limitations rather than modifying the proximity operators. Example: A and B = 3000 hits Examiner will choose: Will not choose: Will not choose: too many to review A and B and C and D = 300 hits A same B = 400 hits A with B = 200 hits The reliance upon the and command loses much of the context of key word or text based searching. *** Unfortunately, most non-examiners do this too

46 Example: Manual second bite at the apple 46 7 (A 1 or A 2 or A 3 ) and B and C 8 and D and E and A 2 or and A 3 7) Too many Booleans begat an error. No art to A 1 was likely reviewed. 8) Not even mentioning the disappearing database C mon Luther.

47 47 Conclusions A) The publicly available Examiner Search Logic is easily reviewable. B) Reviewing this Logic will demonstrate how specific references were identified. C) Likewise, it can provide a road map to identify search areas that were not considered should you need to question the validity of a patent. D) Examiner Search Logic can provide quality talking points if you need to discuss your patentability search practices. Do you really want Luther doing the only searching on important US applications? E) Bonus: This same type of review should regularly be applied to your in-house or contracted search efforts.

48 THANK YOU! QUESTIONS? Dominic DeMarco Managing Director DeMarco Intellectual Property, LLC Patent Research for Patent Attorneys - All rights reserved