Jumping Fish

Catching Patents (101)

I pre­vi­ously pro­vided a quick overview of patent­ing, and specif­i­cally of patentabil­ity, freedom-to-operate (FTO), and the impor­tance of search­ing — espe­cially patent search­ing — in both of those processes.  As I pointed out, in deter­min­ing whether or not you pass the legal bar­ri­ers to get­ting a patent (patentabil­ity), a gov­ern­ment patent office such as the USPTO is going to search the “art” out there, includ­ing lit­er­a­ture ref­er­ences, pub­lished and issued patents, etc., to see if your inven­tion is (among other things) “novel” and “non-obvious” in light of that art.  And as I also pointed out, under­stand­ing your FTO requires an under­stand­ing of the issued and also pub­lished patents in what­ever coun­try or coun­tries you’re plan­ning to make, sell or use your par­tic­u­lar com­mer­cial process.  And, as I finally noted, you should treat every­thing I said as only a pre­lim­i­nary intro­duc­tion to a com­plex process, and you should seek out a patent professional’s opin­ion before mak­ing any irrev­o­ca­ble deci­sions that might effect your puta­tive patent rights or your pos­si­ble infringe­ment of the patent rights of oth­ers.1

In light of the above, it should be abun­dantly clear that search­ing — includ­ing but not lim­ited to patent doc­u­ment search­ing — is crit­i­cal to patentabil­ity and FTO issues.  Since the title of this post is “Catch­ing Patents (101),” you can and should rea­son­ably con­clude that what I’ll be talk­ing about here is an intro­duc­tion to patent search­ing (the “101”), but that this is only an intro­duc­tion.  Since this is an intro­duc­tion, let’s do the 101 thing and start with a con­crete example.

Key­word Searches

A con­crete exam­ple?  Yes.  Lit­er­ally.  No, really, I mean lit­er­ally.  How lit­er­ally?  Go to the USPTO’s search site for issued patents (http://patft.uspto.gov/netahtml/PTO/search-bool.html), and type the word “con­crete” in the TERM1 box and hit “search,” that’s how lit­er­ally.  As of this moment that search retrieved … 121,597 issued patents; that’s a lot of patents, although given a) there are cur­rently over 8 mil­lion issued US patents, and b) con­crete is prob­a­bly a pretty impor­tant area for patent­ing, it’s per­haps not as amaz­ing a num­ber as you might think.  By con­trast, a sim­i­lar search, but for the term “aard­vark” turned up (as of this moment) only 118 issued patents, very few of which seem to be directly related to the ani­mal.  US6,892,622, for exam­ple, is titled “Anti-mine Unit,” and refers to aard­varks only in the con­text of the com­pany “Aard­vark Clear Mine Lim­ited;” not very inter­est­ing, but then again I wouldn’t have expected to find the aard­vark — or Oryc­tero­pus afer for the tax­o­nom­i­cally inclined — to be a hotbed of patent­ing activities.

So much for a first search.  We learned that con­crete is hot and aar­varks are not.  Any­thing else?  Well, actu­ally, a num­ber of things.  That aard­vark search — a quick scan down the first 20 or so entries doesn’t indi­cate any aard­varks the ani­mal, which means that “aard­vark” quite pos­si­bly isn’t a very good key­word if you want ani­mal aard­varks as opposed to all the oblique ref­er­ences that we actu­ally got.  Let’s try “Oryc­tero­pus afer” and, when that doesn’t work (it didn’t for me any­way), let’s just try “oryc­tero­pus.”  Still noth­ing.  Per­haps there are no aard­vark the ani­mal patents at all.  Or, to go back to the first post, per­haps we’re still not using a well designed search net to find them.

For the moment we’ll leave the ques­tion of whether aard­varks the ani­mal exist in any of the patent data­bases; the impor­tant point here is the dilemma of know­ing whether we found noth­ing because there is noth­ing to find; or, instead, whether we found noth­ing because we didn’t do a very good search.  Or, to be more spe­cific, whether we did a good key­word search, because that is, after all, the kind of search we per­formed, and it’s impor­tant to under­stand that there are other kinds of searches that can be done.

What other kinds of searches?  Well, in addi­tion to key­word searches, there are clas­si­fi­ca­tion searches and what I’ll refer to as ambi­ent knowl­edge searches.  These two top­ics are impor­tant enough that I’ll spend the rest of this post briefly dis­cussing them.

Clas­si­fi­ca­tion Searches

In this age of search engines it’s hardly sur­pris­ing that the kind of search­ing we first think of is key­word search­ing, with “aard­vark,” “Oryc­tero­pus afer” and “oryc­tero­pus” being three exam­ples of key­words.  How­ever, sur­pris­ing as this may seem, at one time there were no com­put­ers; and, even after that, for a good long time com­put­ers weren’t ubiq­ui­tously used for search­ing.  But on the other hand patent sys­tems have been around for a long time — the US patent sys­tem was started by George Wash­ing­ton on April 10, 1790 for exam­ple,2 and accord­ing to Wikipedia patents date back to 500 BC, in, of course, ancient Greece.3  So up until recently peo­ple weren’t search­ing based on key­words; instead, they were search­ing based on sys­tems of clas­si­fi­ca­tion.

When I was at Uni­ver­sity, I made var­i­ous futile attempts to cre­ate my own sys­tems of clas­si­fi­ca­tion;4 by grad­u­ate school I had pretty much given that sort of thing up.  The same can­not how­ever be said for the var­i­ous patent offices; the Inter­na­tional Patent Clas­si­fi­ca­tion (IPC) sys­tem, for exam­ple, has about 70,000 cat­e­gories,5 while the USPTO has 450 classes and 150,000 sub­classes.6  There are a num­ber of help­ful guides to using these clas­si­fi­ca­tion sys­tems,7 but a sim­ple hands-on exam­ple will cap­ture the essence of the process.

To that end, go to www.uspto.gov/web/patents/classification/ and, in box C (“Search USPTO”), with “look in” left at “Patent Clas­si­fi­ca­tion,” search for the word “con­crete.” While over time the results may vary, as of this writ­ing this search brings up two hits. Click on the first one and search for occur­rences of the word “con­crete” and you’ll see var­i­uos hits which give you a sense of clas­si­fi­ca­tion — but on the other hand things still seem a bit discordant.

That’s fine, no one said clas­si­fi­ca­tion sys­tem search­ing was instan­ta­neously illu­mi­nat­ing, so go back and re-run the same search, but this time with “look in” set to “Index to Clas­si­fi­ca­tion.”  Click on the first hit, and search for the word “con­crete,” and you should find an entire index cat­e­gory for con­crete, with a lovely con­cep­tual index depend­ing from that term, a whole cor­nu­copia of cat­e­gories that give insight into how to find var­i­ous patent ref­er­ences in the data­base that might never have come up via key­word search­ing.8

Ambi­ent Knowl­edge Searches

I have to admit it: I don’t use clas­si­fi­ca­tion searches nearly as much as I ought.  The ought part is straight­for­ward enough: not only are such searches highly illu­mi­nat­ing of pos­si­ble patents and patent pub­li­ca­tions that might be rel­e­vant to patentability/FTO,9 but patent offices use their clas­si­fi­ca­tion sys­tems in deter­min­ing whether there is patent art that makes an appli­ca­tion for patent not-novel, obvi­ous, etc., and so under­stand­ing how var­i­ous patent offices do search­ing will help you in get­ting some esti­ma­tion on the kinds of rejec­tions you’re likely to get if/when you apply for a patent.

But I’m fun­da­men­tally lazy; or, per­haps, I tend to work in IP areas where clas­si­fi­ca­tion isn’t as use­ful.  Thus one of my spe­cialty areas is biotech­nol­ogy, and my own feel­ing is that cutting-edge biotech inven­tions tend to fall out­side the log­i­cal con­fines pro­vided by clas­si­fi­ca­tion.  What­ever the rea­son, I don’t use the clas­si­fi­ca­tion sys­tems as much as I should.

Or at least I don’t at first — instead, what I do use is ambi­ent knowl­edge search­ing and key­word search­ing to define up a cor­pus of infor­ma­tion that, with luck, gives me a sense of what classification(s) I might look in.  So how does all that work?

Ambi­ent knowl­edge is the term I use to describe the jum­ble of infor­ma­tion about a par­tic­u­lar sub­ject area that we grad­u­ally accrue by read­ing about that sub­ject, think­ing about that sub­ject, research­ing that sub­ject, pick­ing through stuff about that sub­ject.  It’s not a method­i­cal col­lec­tion of infor­ma­tion; but the infor­ma­tion grows nev­er­the­less.  And the result­ing pile of knowl­edge pro­vides a huge entry point into design­ing patent searches.

So again let’s give an exam­ple.  Let’s say we sud­denly real­ize we mis­re­mem­bered the name of our favorite “A” ani­mal — it’s not, after some reflec­tion, “aard­vark” but instead “armadillo.”  And this sud­den insight came when watch­ing “Arthur,” and we real­ized that, much as we love the Reed fam­ily of Aard­varks, those weren’t in fact the ani­mals that our favorite aunt has stuffed copies of all over her book­shelves.  Ambi­ent knowl­edge strikes.

We search the USTPO clas­si­fi­ca­tion index for “armadillo” and find … noth­ing.  And then we do a key­word search for “armadillo” and find almost 1200 hits, some of which are to stuffed toys but some of which are pretty clearly to the actual ani­mals. Now why should aard­varks war­rant lit­tle if any sci­en­tific study when so much atten­tion is appar­ently paid to the biol­ogy of armadil­los?  Are armadil­los charis­matic megafauna when aard­varks are not?10

Ambi­ent knowl­edge to the res­cue.  Years ago I came across a fas­ci­nat­ing arti­cle on how armadil­los are one of the few ani­mals that can be used to study lep­rosy.11  So the like­li­hood is that armadillo biol­ogy is stud­ied because these ani­mals are a model sys­tem for a hor­ri­ble human dis­ease, and I could focus my search on that topic by search­ing for both “armadillo” and “leprosy.”

Fur­ther­more, with bet­ter rec­ol­lec­tion I might actu­ally remem­ber the names of the peo­ple doing sem­i­nal work with that model sys­tem, and I could use that ambi­ent knowl­edge to search just for patents to those peo­ple.  And, hav­ing done so, I could look at the cover page of each of those patent appli­ca­tions or issued patents — where the clas­si­fi­ca­tion num­bers for those doc­u­ments are listed — and see if they have any clas­si­fi­ca­tion num­bers in com­mon.  And any of those non-keyword searches would very likely add con­sid­er­ably to my ambi­ent knowl­edge of the sub­ject, mak­ing my search­ing bet­ter, and thereby giv­ing me bet­ter insight into patentabil­ity (if I’m doing lep­rosy work for exam­ple) or FTO (if I want to see if there are any patents out there on armadil­los and lep­rosy that I need to be wary of for infringe­ment purposes).

So in a nut­shell catch­ing patents is as impor­tant as catch­ing fish; and key­words aren’t the only way to troll the patent doc­u­ment seas.  The topic is impor­tant enough to war­rant a real exam­ple — as inter­est­ing as aard­varks and armadil­los are.  Stay tuned for the next post, where I’ll delve briefly into an actual USPTO search, again on the prin­ci­ple that exam­ples are worth more than exegesis.

  1. And also, please do read the Dis­claimer []
  2. See www.uspto.gov/news/pr/2002/02–26.jsp []
  3. See en.wikipedia.org/wiki/Patent []
  4. I dis­tinctly remem­ber attempt­ing to do that sort of thing in my organic chem­istry classes with var­i­ous ketones, alde­hy­des, ethers, esters and so on; the results were spec­tac­u­larly unsuc­cess­ful. []
  5. See www..wipo.int/classifications/ipc/en/ []
  6. See /www.uspto.gov/patents/resources/classification/ []
  7. See, e.g., www.uspto.gov/web/patents/classification/help.htm []
  8. The index class/subclass entries are them­selves click­able, and will take you to pages where you can bring up all the cur­rently pub­lished or issued US patents with that class, sub­class etc. []
  9. And I should note that, although this dis­cus­sion is USPTO-centric, clas­si­fi­ca­tion searches in Rest-of-World IPC clas­si­fi­ca­tions are just as use­ful. []
  10. A term coined by Richard Lewon­tin; see, e.g., en.wikipedia.org/wiki/Charismatic_megafauna []
  11. My ambi­ent knowl­edge is much more the beachcomber’s accu­mu­la­tion of ran­dom frag­ments of shells and crab claws and drift­glass and other bright shiny objects than it is coher­ent or con­sis­tent.  And what I find “fas­ci­nat­ing” is prob­a­bly equally idio­syn­cratic.  Well, in the words of the famous sailor, “I yam what I yam.” []