I have just participated in a 10 hour course on patent searching that was sponsored by Kim Lindy’s Intellectual Property Resources (IPR), and was given by Arad Ophir Ltd, Israel’s leading data resource company, that was established 25 years ago, and which provides search and information services to patent firms, universities and tech transfer companies, industrial players, and so on.
The course was held in Machon Mofet at Michlelet Lewinsky, which is near the Glilot junction between Tel Aviv and Herzliya. The place is accessible and has plenty of free parking. The classroom used had computers, which allowed the participants to gain experience in using the various tools and databases.
The course was intended by a mixture of researchers, in-house patent portfolio managers, employees of university tech transfer offices and patent attorneys.
This was the first course of its kind that Arad Ophir was offering to the public, although apparently the lecturers had presented various seminars and courses as part of university courses, within companies, and so on.
There were sessions on various aspects of the patenting process, and on the difference between Patentability and Freedom to Operate, and between the required searches, with other searches such as landscape searches and searching for art to invalidate a patent that a third party is trying to enforce against the client.
Participants were shown the free databases such as Espacenet, Google patent, and the value added features of commercial databases with charged usage, such as Lexis Nexis and others that offer Derwent titles and abstracting, and also provide coverage of patents from smaller patent offices.
In general, the commercial databases provide better display tools, and are helpful at providing graphical displays such as pie chart and graphs for summarizing the data. In addition to patent and scientific databases, we were also shown business databases that aggregated information from press-releases, newspaper articles, public tenders, and the like, showing what information about products, market sectors and companies was readily available to investors and how it could be easily accessed.
Participants were able to play around in the various databases, including STN – the Science and Technology collection of databases that has unequaled science and technology coverage, Nexis, which is a place to review patents and products, and Nexis Dossier which is more focused on intelligence about companies.
To get everyone on the same page, the course started with Arad Ophir employee Dr Ayelet Opharim giving an overview of patenting and patent prosecution. This was a mistake as though no doubt competent in search services and navigating the various databases, she was less familiar with various aspects of the patent process. For example, Dr Opharim presented a time-line of patent prosecution in Israel, and explained that the process commences with the issuance of a Notice Prior to Examination. So far so good. However, she have the impression that the Israel Patent Office may ask for various documents, whereas in practice the Notice is a standard letter that is identical for all applicants. True, it has changed a little over time, so now one only needs to submit a list of citations and copies of non-patent literature which can be uploaded online, whereas in the past, a CDROM with the citations was required to be submitted.
The lecturer went on to discuss ways of accelerating examination, but unfortunately got muddled up between requesting allowance under Section 17c and the PPH. Section 17c is a statutory provision under which applicants can generally avoid substantive examination by conforming the claims to those of a corresponding patent issued by a recognized examining patent office (such as the USPTO, EPO, UKPTO, etc) and requesting allowance, whereas the PPH or Patent Prosecution Highway is a multinational agreement between patent examining offices under which, once a patent is allowed in one jurisdiction, applicants can supply a chart showing how the pending claims map onto those allowed to a corresponding jurisdiction, and the corresponding jurisdiction Is supposed to commence examining the pending patent, using the work already done by examiners elsewhere as a starting point.
The word embodiment came up, which means “the representation or expression of something in a tangible or visible form” and is used in patents to refer to an example of system or method that utilizes an aspect of the invention. Here again, the lecturer gave a wrong and misleading definition.
Veteran Patent Attorney Einav Zilber and I corrected the various errors, but it was uncomfortable though necessary to intervene, and I think it would have made more sense to have had a patent attorney making the introductory lecture.
Einav Zilber then gave a talk about how to read patent documents, and which parts were important for which purpose, and how different people in a company needed different summarizes and different guidance. Thus a CEO or other senior person in a discussion of Freedom to Operate or infringement should be kept focused on the claims and the jurisdictional coverage of a patent family, whereas someone in R&D helping with overcoming an Office Action (a rejection of a patent application by an Examiner at a Patent Office) based on a cited patent or application, should be kept focused on what the citation teaches, and not on whether a patent issued, the scope of the claims and whether it is in force. As would be expected, the patent attorneys were on familiar ground, but researchers and even in house patent managers seemed to find the explanations helpful and useful. Some of the talk was based on an a presentation given to the public as part of an AIPPI conference in Israel, and it was rather flattering to see myself credited on the slides, as part of the team of Israel Patent Attorneys that were involved in their preparation.
There was a valuable session on searching for chemicals or specific molecules, and the importance of using synonyms and CAS registration numbers. The coverage of Chemical Abstracts and Medline was discussed.
Perhaps not surprisingly, the lecturers from Arad Ophir reported that some patent attorneys discourage their clients from searching and could not understand why. As search professionals it is clear that it is in their interest for all potential clients to order searches. Indeed, their position was that clients should search before embarking on a course of action, use alerts to track developments, and to periodically search for freedom to operate and other purposes.
On my way home from the first day, I took a call from a referral regarding an App he was thinking of developing in the framework of a Startup company. He was keen on searching to make sure that he wouldn’t run into legal problems. I explained that if he explained the idea to me, I could do a patentability search or a landscape search directed to finding out about competing products, but it was too early to look into Freedom to Operate since until he knew how the product was supposed to work and where it would be sold, it was too early to analyze what problems could be encountered. It seemed reasonable to note that it was a perfectly reasonable business plan to deal with accusations of infringement if and when they came up, by a work-around, by purchasing a license, or even by closing the company. In his case, it was more than likely that any infringement would not be of a direct competitor’s product, and licensing would be an option.
A client who is thinking of developing a product can benefit from a landscape search. However, a client who has already developed a product and is intending on marketing, should be made aware of the pitfalls, but it is not unreasonable to file an application so that the product may be launched as patent-pending. If there are enough features to create a claims structure with fall-back positions, it is not unlikely that a patent will issue, and it may be reasonable to let the examiners do their job and to relate to prior art cited when it is cited. As with many things, it is a question of budget. In some cases, the client needs a patent application for fund-raising purposes. Sometimes the client decides to file a PCT application as a first filing and to obtain an International Search Report. This is an option that may be cost-effective, with the quality of the search being not very different from that of a basic patentability search conducted by a data searches, and considered more authoritative and neutral by investors. Also it is important to note that awareness of a commercial entity of a patent that their product infringes can create triple damage liability.
Earlier today I met a new client who has developed a prototype a product that is the result of much thought. There is nothing clearly inventive, but it appears to be in the client’s interest to file a patent application as well as to register designs for the product, as they are aware of competitors that will copy their product. There is a business logic in being ‘patent pending’, even if no patent eventually issues. Where there are aspects of the product that are novel, it may make commercial sense to file a patent application even if the likelihood of a patent eventually issuing is not high. It is for reasons such as this, that patent attorneys do not always recommend searching.
Freedom to Operate searches are important for clients in fields that are competitive and widely litigated. Not all applicants are in that position. Whilst having a patent for a product is no guarantee that the product does not infringe a patent of a third party, it is worth noting that juries, and indeed judges that are not IP specialists are impressed with the spurious argument that the accused has developed and marketed a product that was itself granted a patent. I once wrote a patent application for a client who felt that it had the financial resources to win if challenged for infringement, regardless of the legal merits of their case, and was not interested in searching. This is a different perspective and may not be the most honorable, but makes business sense to some clients in certain scenarios.
We note that Arad-Ophir correctly has a policy of not opining regarding the relevance of their findings to issues of patentability and Freedom to Operate, and advises consulting with a patent attorney. Some companies offering patentability searches are less careful, but the devil is in the detail. It is worth noting that in Israel it is illegal for anyone other than patent attorneys or attorneys at law to give legal advice on patent issues. Data experts can certainly search and may be more cost-effective or even better at searching than patent attorneys, but a patent attorney should be consulted to discuss the relevance of the findings.
Budget allowing, it makes sense to combine the data searching capabilities of data experts with the knowledge and skill of the patent attorney. However, this can be expensive as one is paying the fees of two professionals. That said, one of the in-house patent managers from industry pointed out that having to abandon a branch of the business after significant investment in something that infringes patents of a direct competitor can be very expensive indeed.
Rina Arad gave a thought provoking talk about how artificial intelligence (AI) is being tested by patent offices to find prior art without, or at least with less human input by patent examiners. It was based on a talk by an Israel Patent Examiner who was credited. This gave an additional perspective and was forwarding looking. I had, however, heard the lecture from the patent examiner when it was first given. I first learned to navigate STN as a trainee patent attorney at Luzzatto et Luzzatto some 20 years ago, when Rina Arad and her partner gave the course themselves. It was nice to see how the Arad-Ophir has grown, and how the database access has developed.
I think that there is a need for patent search courses like this. This was the first time Arad – Ophir was offering such a course, and I am sure they will rethink the content and emphasis. It is possible that separate courses should be run for patent attorneys, for researchers and for in-house counsel, but for this to be possible, it will need sufficient numbers of each group to sign up for dedicated courses.