“If I cease searching, then, woe is me, I am lost. That is how I look at it – keep going, keep going come what may.”
― Vincent van Gogh, The Letters of Vincent van Gogh
“No one is ever satisfied where he is….Only the children know what they’re looking for….”
― Antoine de Saint-Exupéry, The Little Prince
I was privileged to be invited to the IPR seminar on patent searching. The event was really for in-house IP managers, and although I effectively serve as the IP manager for a handful of main clients, I have an IP Boutique, so was not really eligible to attend.
I had a hectic day and worked through lunch, arriving at the seminar exactly on time, just as it was beginning. The first thing that struck me was that the seminar took place around a large rectangular table. All the women present were on the right side of the table (from speaker’s perspective, and the men were on the left. I’d never thought of Kim as religiously right wing to the extent that she would advocate separate seating, but no one seemed to object. Happily there was no mechitza – physical barrier, beyond the conference table which was certainly wide enough to prevent ilicit footsy.
Kim kindly pointing me in the direction of an empty chair directly in front of the buffet which included filled rolls, wraps, burekas, vegetable dips and rugelach style pastries. Purely for review purposes, and because I was hungry, having not had any lunch, I was grateful for this, and ended up not needing supper either.
There were two speakers. Firstly, Israel Twito talked about different types of searches and search strategy, using Questel Orbit as the search engine, thereby demonstrating its capabilities to the audience.
Not surprisingly, he chose a couple of quirky Inspector Gadget type examples as inventions to be searched for. One was concealed bridge spectacles that consisted of lenses that coupled to a through nose piercing. The other was motorized in line skates. He demonstrated keyword Boolean searching and classification searching, and showed the search functions and various fields that could be searched.
The presentation was a little pedestrian, and Kim actually asked that the level be ramped up for the second half. I do offer searches, and on occasion have outsourced to Newtone. The type of inventions Israel Twitto was using to demonstrate the software are precisely the type that I would charge a minimal rate to cover initial meeting, search and report, and would probably find over a cup of coffee within minutes. The type of searches I’ve outsourced have been for things like lock-mechanisms, where there is no unique combination of classes or good keywords, since the mechanical components are all known and the inventive feature is rather more subtle. I’ve handled locks as a subcontractor from another IP professional, precisely because claiming such structures is far from trivial. Still, Israel lectures well and he fairly showcased himself and the search capabilities of the software. He briefly discussed Freedom to Operate and landscape searching.
Daniel Ovadya, the Questel Orbit sales representative that covers Israel then demonstrated how the software could be used for mapping industries, trends and the like. The software has impressive graph generating ability, and for business reports, is no doubt of value.
Daniel demonstrated various pitfalls that could result in searchers obtaining and displaying the wrong information based on the fact that the search engines review publications, and don’t necessarily take into account that national phase entries of European patents can be in force, despite there not being a separate publication. He emphasized that Questel avoided these errors by being programmed to summarize the data more correctly.
Here I have a problem. Questel has impressive artificial intelligence capabilities, and generates its own summaries of patent documents. It enables sorting through only live patents, and intuitively knows to consider PCT applications within 30 months, and pending EP publications. For all I know, it may be aware of the 12 month grace-period for late filing into Canada, the two month grace period for China, and that Hungary has a 33 month deadline. It does not suggest that the user consider searching European cases as well, or active PCT cases, but does things automatically. This results in it not being clear to the user, or at least not to me, where and how the engine is searching. I want transparency, not software that knows better.
I have a further issue. Apparently citing an approach used by his clients, Daniel suggested that if one is doing Freedom to Operate, finding a lapsed patent that describes exactly what you are doing means you can stop searching, since it is in the public domain and anyone can do it. This approach is wrong. If a patent covers the combination of elements A+B+C+D and has lapsed due to failure to pay the renewal fee, there is no guarantee that there isn’t a valid earlier patent in force for A+B+C. Here is a concrete example: Israel Military Industries (IMI) developed a large pistol called the Desert Eagle that was patented in the States. It is rather large and has a wrist breaking recoil, so is most useful for American movies, and not overly practical. IMI dully received a patent for their gun. However, Magnum had a patent for a recoil mechanism that blocked IMI from manufacturing their gun. Eventually the companies collaborated and IMI made the weapon for Magnum, which distributed it. If IMI’s patent lapses, Magnum’s could still be in force. The lapsing of IMI’s patent would provide freedom to operate to Magnum but not to other entities.
I respect Israel Twito’s searching experience and capabilities, and Daniel Ovadya’s knowledge regarding his software package. Both can be used but with care. Patentability and Freedom to operate are legal questions that should be addressed by patent attorneys. I t should be appreciated that data analysts are not competent to provide legal opinions. In fact true patentability and Freedom to Operate opinions are jurisdiction specific and heavily influenced by binding local case-law and legal constructs. For example, one cannot opine regarding the dangers of operating in Israel without knowledge of the Law of Unjust Enrichment, contributory infringement, constructive infringement, and so on. In other words, knowledge of the prior art is just part of it. One should know the relevant case law, including Schori vs. Regba, Rav Bareakh and A.Sh.I.R. Where there is an issue preventing Freedom to Operate, a good patent attorney with legal and technical skills may be able to come up with a work around solution. However, this also requires knowledge of the doctrine of equivalent.
It is worthy of note that participants were encouraged to bring their laptops and Daniel Ovadya set them up with temporary Questel accounts to test the software. At the end of the event, he generously announced that the accounts would be active for 30 days, thereby providing participants with a proper opportunity to test out the software package.