Facilitating Freedom-to-Operate Searches

by Dennis Crouch

A good freedom-to-operate (FTO) search will include a search of pending patent applications with an eye toward potential future threats. Over the past decade, the USPTO has published over 2.5 million patent applications. One problem with using that database for freedom-to-operate searches is that most of the published applications are either (1) already patented or (2) abandoned. Over the past three months (June –  August 2010), for instance, about 80,000 published applications were “disposed of.” If we include unpublished applications, during that period, 36,862 US utility patent applications were abandoned and 62,686 utility patents were issued.

Patent academics argue about the vague nature of pending applications (largely because claims can be modified prior to issuance). However, up to now, the database of published applications has been difficult to use as a FTO search database for a far simpler reason — most of the results in a patent application search are for applications that are no longer pending.  Those concluded cases unnecessarily clog the results.

As far as I know, no search-software-vendor has taken on the task of offering US patent application search results that include only pending applications.  Part of the difficulty of accomplishing that result is that it has been difficult to identify which applications have been abandoned.  

As part of its data transparency project, the USPTO recently began publishing a list of abandoned patent applications. [LINK]. In the near future, I expect that this newly available data will be helping to facilitate your FTO searches.

* * * * *

PatentlyO075

  

 

73 thoughts on “Facilitating Freedom-to-Operate Searches

  1. 71

    Night Up,strong long afraid whom development human strange manner impression right initial many visit comment expectation unfortunately severe buy major teacher couple pay husband broad vote gentleman reject development economy both however key lady accompany protection responsible commission until management increased training sure reaction everything long much interview but organise touch accident conclusion actually sale colleague yourself about recall weapon product imagine hair divide significant permanent city fly solicitor initial thought score profit round kitchen head concerned girl question audience leg cos force western tradition revenue across quite edge attention coffee their enough

  2. 70

    And what’s really a hoot. when I finally received the Application to view, I sent it back because the slotted swim platform drawing was not there? And if I could only have “AHEM” three drawings they needed to correct one.
    And it turns out that I have a drawing that I received from the Law firm (3rd set) and guess what there is a drawing of the slotted swim platform fender. Which in fact was never on any of the applications I have, and it showed a universal approach.
    Now when was that filed… hmmm. July 19th, Sept. 22nd, Oct 19th, Nov.10th, Nov. 20th, Nov 22nd? My guess is as good as yours.
    And you know what I think? I’m no Lawyer but wouldn’t a well defined independent claims. Like thin wide and elongated.
    And then thin wide elongated and plural be accepted as being two independent claims? After all didn’t they allow that on the Lemke, as they (Examiners) looked at my idea

  3. 69

    I did all I was supposed to do. What was done to me was intentionally purposefully destructive for the sole purpose of stealing my Idea. Why would any Lawyer put two ideas on the one application if it weren’t. I paid all my Fees. It’s not my fault that the Lawyers and the USPTO had other ideas.
    Why would POPA protect the Examiner.Elementary, it wasn’t just the Examiner they were protecting!!!!!!!!!!!

  4. 68

    I agree with Greg. When I do an FTO search, I always check the status of applications, study the live ones and put them on a “watch” list.

    The problem, however, is: WHEN is an application truly abandoned? I’ve seen a number of them get revived, some quite late, and some revived only in certain technology fields, leading to the suspicion that the applicant did a “quiet abandonment”, and then changed their mind (possibly based on a competitor’s behavior?).

    So again, when is an application truly, irretrievably “abandoned”? Is there any point at which a latches argument could be made?

  5. 67

    I agree with the Big Lebowski, the USPTO should post all documents the same day if they are e-filed, and put some resources into scanning and posting those that are paper-filed as soon as possible. I’m not prepared to go as far as saying the 18 month publication rule should be abolished, as it certainly comes in handy when trying not to create your own best prior art.

    PAIR is and always will be the first place I go after I have identified a technically relevant US publication (or patent for that matter)to see what claims are actually pending in that particular application and/or in any related applications that may exist. I also use the continuity data to look for recently filed but not yet published continuing applications.

    Continuity data, like data on abandonment, should also be used with caution, as in complex patent families there can be disclosure shared between a few priority documents that could theoretically lead to identical claims. So, you might not find dangerous “lines” in the family if you rely solely on the PTO continuity data. Here, the publications definitely become useful – try to spot differences in the priority claims of very similar looking disclosures.

    As for “jukes” to watch for that are similar to having an application publish and then later abandon it, I have also seen many instances where a prelimnary amendment was filed to change the claims immediately after publication, but before examination. Another tactic is to try to keep your competitors in the dark by not assigning your patent applications until after they publish (can cause other issues, but that would be a topic for another thread), thereby thwarting those who rely primarily on assignee searching. Inventor searches can partially overcome this tactic.

    Max, your question of how to do a proportionate FTO study is very salient. I think it really begins with a careful look at the competitive landscape and the patenting habits of the competitors. If your competitors are large entities with vast resources, you have think they may be playing lots of tricks to keep you off balance and you may need to dig deep. If your potential competitors are primarily start-ups looking for funding from investors, I think their patenting activities are generally more transparent (outside of the 18 month window, or the lag between filing of continuing applications and their publication) because the publications serve a marketing function if the potential for buy-out is seen/desired and resources.

    In the end, time and resourcs are not limitless and we all have to do our best with what we have by being as efficient as possible. Not easy, but that’s what makes the job of searching and managing FTO risks so challenging and rewarding at the same time.

  6. 66

    Perhaps, but expensive isn’t really the lawyer’s problem, difficult is what he’s hired to do in the first place, and risky isn’t even in his vocabulary.

    Maxie, as much as you might like to think that my man IANAE is on your side, this statement shows that he is aligned with me.

    The only observation that Ida make is that “business” aint somethin that happens to other peopple – lawyers be all about the “business” (true, the scope of that business be not the same). As for “risk”, everybody tries to avoid it and nobody wants to take it on if they don’t have to.

  7. 65

    Max: I think it is more expensive, more difficult, and more risky than it need be,

    Perhaps, but expensive isn’t really the lawyer’s problem, difficult is what he’s hired to do in the first place, and risky isn’t even in his vocabulary.

    When I (hypothetically) hire a lawyer to do an FTO, I want him to take the “risk” of describing my risk to me in such a way that I can manage it by making smart business decisions. At his hourly rate, I expect him to tackle even the “difficult” bits. If it were easy, I’d do it myself or find someone cheaper with less experience. Yes, it’s expensive, but the whole reason I hired him is because the cost of the FTO is a small insurance premium on a much larger capital investment.

    I need my lawyer to understand that his business is to provide useful advice to my business, to manage my risk. I’m not asking him for permission to sell my product, but I’d rather have a detailed description of the uncertainties I face than a boilerplate “I don’t know, but be advised that I didn’t tell you so whatever happens isn’t my fault” for every single pending application out there.

    To a lawyer, “risk” and “business” are things that happen to other people.

  8. 64

    Thanks IANAE, for the comfort. As you say, meaningful FTO work (in the sense I understand it) is expensive, risky, and difficult. I think it is more expensive, more difficult, and more risky than it need be, because of the Statute and the jurisprudence, and that many US lawyers like it that way. That’s my point, on behalf of my clients.

    ping, if IANAE gets my drift, I fondly imagine other readers do too. That you don’t get it is your problem, not mine. That you want to beat me up is your problem, not mine.

  9. 63

    Max: On this thread, I see rather more awareness of the degree of risk for the opining attorney than for the prudent investor.

    Yes, that’s what I was getting at earlier. When the opining lawyer has a choice between some degree of useful information and an information-free blanket disclaimer, it’s not even worth the lawyer’s ridiculous hourly rate to read a published spec prior to allowance and go out on a rather sturdy limb. Even searchers seem somewhat reluctant to tailor their reports to the client’s business needs.

    It really is shocking when a lawyer is afraid to give his legal opinion.

    Max: Presumably then they would advise those contemplating entering the US market first to do a proportionate FTO study. But how?

    You need to find the right people, obviously. People who are willing to give you the advice you need. And by the looks of it, there aren’t many of them to be found, and they’ll probably be expensive.

  10. 61

    Maxie,

    On this thread, I see rather more awareness of the degree of risk for the opining attorney than for the prudent investor.

    Where?

    Sure lawyers want to cover their but and have a version of the Hippocratic oath (First, do no harm, to me) – which is understandable given the line of work, but any limitations on search and major CYA ya see is client driven. It be the very prudence from the prudent investor simply exercising his prudence. Ya seem to be trying ta say somethin, but I aint sure what.

  11. 60

    I can see that FTO is about “risk management”. But whose “risk” is being “managed”? I had thought it to be about putting investors in innovation into a better position to manage their risk.

    On this thread, I see rather more awareness of the degree of risk for the opining attorney than for the prudent investor.

    Which is a pity for, without prudent investors in cutting edge technology, which moves ahead faster than the PTO can issue patents, patent attorneys have no clients, and the economy has no future.

    Contributers here want a patent system that is “strong”. Presumably then they would advise those contemplating entering the US market first to do a proportionate FTO study. But how?

  12. 59

    I would rarely want to speculate as to what claim scope is likely to issue from an unexamined patent application without a validity study (let alone based on a “cursory reading” of the spec)

    You would if you were concerned with limiting your exposure to infringement. It doesn’t usually take long to figure out what the “invention” is in even an unexamined application, and if you’re not doing that you’re probably in the clear. If you’re doing what the “invention” is, that application is worth a closer look to see what they might ultimately patent from it. Sure, you could be in trouble if they amend the claims in some unexpected way, but that’s much less likely than claiming a narrower aspect of the main invention, and at least you’ve addressed the greatest risk from that publication. It’s certainly more worthwhile than reading the laughably broad unexamined claims.

    Of course it depends on what level of risk the client will tolerate and how much money the client is willing to spend, but I think that approach is generally a pretty good value for money.

  13. 58

    IANAE: I disagree. I would rarely want to speculate as to what claim scope is likely to issue from an unexamined patent application without a validity study (let alone based on a “cursory reading” of the spec) unless the prior art both unquestionably anticipated the pending claims in question and did so in a way that would remove any infringement issue for the proposed product. Obviously there’s a sliding scale here between the client’s budget, ease of redesigning the product in the future, etc., but I don’t think one size fits all.

  14. 57

    To exclude the 9 references that are more likely potential infringement problems (and happen not to have recorded assignments) and instead cite the 1 mediocre reference assigned to a big name player is very selective vision.

    Of course it’s selective vision. And if the company really cared about the information it wanted, it would also be asking for unassigned applications that were likely owned by those companies. But the vision is deliberately selective and for a very good reason.

    But it is a sort of infringement/FTO search, because a mediocre reference owned by a top competitor is more of a business risk to them than a clear case of infringement by some license-happy NPE or a company in a completely different field. If those people ever approach you for infringement, you can give them money and they’ll go leave you alone. They probably wouldn’t have gotten an injunction anyway. So they rephrased the question of “do I have to worry about other people’s patents if I sell this product?” by telling you whose patents would worry them. And the results will be more useful for them than a broader search on an impossibly low budget.

    It seems that you’re bothered about creating art to spec, but that’s the best way to sell your art. That’s the kind of art that saves you having to die before you can turn a profit, but it’s always somewhat offensive to the more talented artists.

  15. 56

    IANAE,

    Re: It’s perfectly natural for companies to be more worried about their competitors than about people in related but not directly competitive markets who might have patents on overlapping technologies.

    So, tell me about the patents owned by the people who are most likely to sue me and press for an injunction.

    Yes, this is very important information. But that is not an infringement search, that is a company search, assignee search, or competitive intelligence. To exclude the 9 references that are more likely potential infringement problems (and happen not to have recorded assignments) and instead cite the 1 mediocre reference assigned to a big name player is very selective vision.

    Btw, the company example was a poor example. I’d definitely take money to follow those instructions and then regurgitate my instructions in the letter back to the client…

  16. 55

    If an application is filed with, say, for simplicity, a generic claim and 100 species claims, why could not the PTO simply say that it would only search and act on the generic claim in the first office action, INSTEAD of the time-wasting forcing of multiple restrictions at THAT point in time?

    Because that wouldn’t be compact prosecution, and it wouldn’t give the applicant any idea of which of his 100 species might be patentable. So the applicant would still want them all (minus perhaps the one species that was found to anticipate the genus), and all it does is waste one round of prosecution without getting the application any closer to a final disposal on the merits.

  17. 54

    I used to be a searcher. The only reasonable approach is to read the claims of only the in-force patents plus those of the published apps and only read the disclosures of everything else, and then look up the status of only the results, i.e. the interesting ones.

    EAST and WEST do at least allow you to cut off by filing date, and to include the filing dates of related applications when you do so, so that you can accurately split the references that you are looking at into two sets, one in which you need to read the claims and one in which you don’t. Separation by status would be a plus, though, as it would reduce the size of the former and increase the size of the latter.

  18. 53

    [on-topic]
    Feel free to consider this a dumb idea just to kick around: If an application is filed with, say, for simplicity, a generic claim and 100 species claims, why could not the PTO simply say that it would only search and act on the generic claim in the first office action, INSTEAD of the time-wasting forcing of multiple restrictions at THAT point in time? Then, if the generic claim is found to be anticipated, the applicant could abandon or amend the generic claim and make its own sensible reductions in the species claims, and/or get a restriction THEN, when it may actually be necessary?
    [Despite endless years of complaints, petitions and studies, the PTO seems to be incapable of fixing its lengthy and confusing MPEP restriction sections, or their highly erratic uncontrolled usage by differenct examiners. So something much simpler and more drastic needs to be seriously considered. With Kappos leading the PTO it might even be achievable?]

  19. 52

    A company may have very legitimate reasons for wanting to know if they are infringing actual legal rights that exist today but not want to have to play fortune teller/gambler about applications and potentially setting up evidence against you that wasn’t necessary.

    A company that is going to commit a lot of money to a product that will be around for a while, and considers it worthwhile to pay for a FTO, is going to want to know about reasonably ascertainable future risks as well. It’s more a question of how much they’re willing to pay for what quality of information, but it’s completely unfair to say that you can’t do better than “fortune teller/gambler” just because the claims can still be amended. You can tell quite a bit from even a cursory glance at an unexamined publication, and even more once it’s had a rejection and an amendment.

    Case in point, the kind of “notice” we’re talking about actually does not have legal effect — doesn’t a provisional rights royalty notice have to contain a specific infringement accusation?

    That’s true, it’s not that kind of notice, but the principle is the same. Notice only ever has legal effect (in the situations when it does) because once you know you’re expected to satisfy yourself that you don’t infringe, and that’s the exact same reason you do an FTO. So you know about the art and you can satisfy yourself that you don’t infringe. So satisfy yourself that you don’t infringe, and put it in writing so you can explain it to the jury later.

    If you’re committed to going to market, and you can’t or won’t change your product at this point, don’t do an FTO.

  20. 51

    IANAE — I don’t think that’s true. A company may have very legitimate reasons for wanting to know if they are infringing actual legal rights that exist today but not want to have to play fortune teller/gambler about applications and potentially setting up evidence against you that wasn’t necessary. Some lawyers have a habit of spinning things to juries in court to look worse than they really are. Case in point, the kind of “notice” we’re talking about actually does not have legal effect — doesn’t a provisional rights royalty notice have to contain a specific infringement accusation? So the FTO “notice” isn’t going to create exposure for royalties, but it might have a big impact on juror’s minds, and thus on settlement negotiations if there’s ever an infringement suit.

  21. 49

    Seeker: I would be curious to see what the attorneys here would think about willful ignorance surrounding not searching PGPubs.

    Well, if you searched them you’d have to think about them. So I say write a nice pretty disclaimer about how you can’t really know what they’re going to end up claiming anyway, and call it a day.

    Rusty: you’ll be putting your client on notice about the invention

    The whole reason notice has some legal effect is the same reason you do a FTO in the first place – so you can decide whether you infringe someone’s patent and avoid infringing if at all possible. If the disclosure turns out to be really close, either don’t do what you think the invention is, or get a written opinion that you don’t infringe or they’ll never get broad enough claims to catch you. Otherwise, why bother paying for a FTO if you don’t want to be aware of the art?

    DIP: “We’d like an infringement search peformed on the attached semi-conductor manufacturing method with the following 8 steps to be cleared… Limit results to the following companies.”

    What’s wrong with that one? It’s perfectly natural for companies to be more worried about their competitors than about people in related but not directly competitive markets who might have patents on overlapping technologies.

    So, tell me about the patents owned by the people who are most likely to sue me and press for an injunction.

  22. 48

    Some of the early cases filed back before 2000 are interesting. Serial number 09089871, for example, went through 21 rejections before finally being abandoned when the BPAI affirmed the examiner.

    Of course, we aren’t seeing the really early cases that are now just going abandoned, since they were never published.

  23. 46

    Gee whiz, why can’t the USPTO get with the program and just make all cons/divs, of any variety, publicly available on the day they’re filed, just like the EPO? If the USPTO feels so tradition-bound that it has to publish paper copies of applications (including all the work in typesetting), then it can publish the paper document later. But make the electronic file – which nowadays IS the official file – immediately available. That would solve part of the problem in identifying cons of abandoned applications.

  24. 45

    but I sometimes have the feeling that it’s not the searcher’s job to find the patent that stops the product launch. Rather, you should produce a list of references that is just good enough to defeat a charge of wilful infringement.

    Not sure I understand this. The searcher’s job should be spelled out before the search starts. I don’t think that the searcher decides whether to stop at the “just good enough” wilful infringement stage if the client has asked for more.

  25. 42

    Max,

    Yes, you are correct these days. Not always true of course, some folks really do want to find out about potentially infringed patents, but the majority merely want to check a box.

    I routinely receive and turn down the following requests (and I am not alone in receiving these):

    “We’d like a thorough FTO search performed on the following network security system… Our budget is $800.”

    “We’d like a full Right to Use search performed on the following stent and stent delivery system… Please only cite the 10 most relevant references.”

    “We’d like an infringement search peformed on the attached semi-conductor manufacturing method with the following 8 steps to be cleared… Limit results to the following companies.”

    And these are the ones they do in writing! The verbal instructions are even more interesting.

    Paul,

    FTO/RTU/infringement/clearance… every attorney has slight variation on their definitions but they are very similar. Some folks like getting expired art (the smarter ones imho) while others do not. And as Seeker mentioned above, some folks do not even want PG-Pubs.

    And yes, you are correct in noting that with certain techs, a true RTU search is virtually impossible to perform (almost any product or service from a Nasdaq 100 company).

  26. 41

    Great comment Lee Taylor.

    PS-DIP, sorry to say, but I sometimes have the feeling that it’s not the searcher’s job to find the patent that stops the product launch. Rather, you should produce a list of references that is just good enough to defeat a charge of wilful infringement.

    This is work that Ashmar can do very well, and he’s becoming quite an expert in what is and is not infringement. Thanks to Ashmar, the management that commissioned his services now has a warm and great value comfort blanket to cling to.

    The product launches, everybody’s happy.

  27. 39

    “I still don’t get it. ”

    You file something, let it publish with your name on it, your opponent sees it, thinks you’ll be going in that direction with your research, but BAM, you get your fees back and go in another direction.

  28. 38

    “Applicants are entitled to refund of search and excess claims fees if the application is expressly abandoned under 37 C.F.R. § 1.138(d) prior to examination of the claims. I suspect that some of the express abondments you have seen fall into this category.”

    Someone tried that on an app I did the other day. They did it the day my restriction went out, petition denied.

  29. 37

    Mark Nowotarski,
    Applicants are entitled to refund of search and excess claims fees if the application is expressly abandoned under 37 C.F.R. § 1.138(d) prior to examination of the claims. I suspect that some of the express abondments you have seen fall into this category.

  30. 36

    Re: “freedom-to-operate (FTO) search” ?
    There is a semantic issue here. Does that mean an “infringement search” looking for any possibly infringed claims in any unexpired patent or pending application? For every feature of the proposed new product? [Which is almost impossible with any reliability for most complex products these days with several million patents in force.]
    True “fredom to operate” is what used to be considered a true “right to use” [RTU] search, finding anticipatory prior art more than twenty years old.

  31. 35

    On a slightly related note: Did the USPTO do something strange with assigning serial numbers in 2004? Filing dates should increase with increasing serial numbers, but I get the following based on PAIR data for applications on the recent abandoned list

    Filing date serial number
    2/2/2004 11/274,514
    7/28/2004 10/901,613
    12/14/2004 10/518,034

    It almost looks like they were assigning serial numbers in reverse order.
    The reason I ask is that I wanted to see more details on filing date versus abandon rate.

  32. 33

    “Why would someone file an application, have it published and then expressly abandon it 4-12 months after filing?”

    It’s called a “juke” in football.

  33. 32

    There seems to be a lot of express abandonments among the applications with high serial numbers (i.e. recent filing dates).

    Why would someone file an application, have it published and then expressly abandon it 4-12 months after filing?

    See 12765240, 12706257 and 12695936 for examples.

  34. 31

    I’m with DIP and several others. What do you do with all those publications that have ridiculously broad claims and haven’t been picked up for examination or had a first office action? Look at the specification and make a subjective judgment as to what is going to be patentable? Perform an invalidity study and issue an opinion on that basis? Even if there has been an office action, trying to predict the outcome of the prosecution is a very inexact science and, as noted, you’ll be putting your client on notice about the invention — it may not count as “notice” for provisional rights royalties or willful infringement, but it might definitely color a jury’s opinion about infringement (i.e., it was close enough that somebody worried about it way back when).

  35. 30

    I work at a patent search company. We do countless FTO’s and there’s a split between atty’s who do even want to know about PG-Pubs and those who do. The one’s who don’t want to know seem to think that it’s mere speculation until the patent is granted as to what the claims will mean.

    I can tell you that for each and every reference that we deem “relevant” for an FTO that gets a lookup in PAIR to, among other things, see if 1) the fees are paid (for patents), 2) if it’s been abandoned and 3) if there’s been a notice of allowance. There have been instances where I’ve found a reference that’s a PGPub that was issued a few weeks prior to the commission of the search that just hasn’t become a patent.

    Our software allows us to upload a note about there reference’s status and a lot of client’s think this is pretty helpful.

    I would be curious to see what the attorneys here would think about willful ignorance surrounding not searching PGPubs.

  36. 29

    and for the price he’s paying he expects a tendency toward the former.

    That’s not the point. Clearly. Available information sometimes is neither “better” nor “worse” – it is what it is. Your point about “disclaimers” is simply off the mark.

  37. 28

    Max,

    Fair enough. Personally, I only use the EPO website as a redundant check on work product. The ECLA classification scheme is quite useful in some art areas and the Espacenet site provides a nice, quick and free double check on my usual means of performing FTO work.

    I do find it disappointing that this posting has garnered so little response today from practicing US attorneys (or searchers other then GW and Greg A). The subject of FTO searching is one of high interest to me and I wish there were more constructive comments. This is particularly true since the post-search drafting of FTO opinions is such a vital part of an attorney’s role and they are whom I work for…

  38. 27

    Can’t say, PS-DIP. Here’s my guess. The EPO records are for disseminating technical information. If your search is for clearance purposes, the EPO database is just a start. You know that you pay annuities to the EPO only until it issues the patent. After the B issues, you would need to check whether annuities are being paid to the national Patent Office of that country in Europe for which your client is preparing a clearance opinion, then the EPO file wrapper.

    Presumably the EPO feels no obligation that its database alone must get you all the way home. The EPO is not the EU Patent Office. It is not the Patent Office of any national court where you can assert a patent. It is just an authority for granting patents, whose services are used by 37 (soon 38) Member States.

  39. 26

    Max,

    Thanks for the reply, but the same issue exists for DE, EP, FR, and GB documents hosted by Espacenet. Even when a B1 or B2 document exists, only the originial A1 claims are shown. Very much devalues the usefulness of their publicly available data. (Not down to the low, low levels of the USTPO website patent search engine though!)

  40. 25

    Dear All,

    Ned and ping, I was indeed alluding to “no new matter” and “written description” with my plea to resist those who, during prosecution, get away with claims having no sufficient basis of disclosure in the app as filed. The tools to do justice between inventors and the public are (of course) there already. They just need to be used properly.

    Searcher asks why does the EPO not serve as a dispensary of the up-to-date US issued claims? Why do you think it should? The issued US claims are irrelevant to the European jurisdiction, and to FTO opinions prepared for that jurisdiction.

    Cowboy, from where do you get the idea that late claiming is forbidden in Europe. It isn’t. See above. What counts is the original disclosure (the written description, that is). I advise you to refrain from doing FTO opinions for any European jurisdiction.

  41. 24

    Any savvy client already knows there is no such thing as perfect information.

    Obviously. But he also knows there are such things as “better information” and “worse information”, and for the price he’s paying he expects a tendency toward the former.

  42. 23

    Your client wants information he can use to make business decisions…not disclaimers

    Any savvy client already knows there is no such thing as perfect information.

    Quantifying (or even qualifying) the risk aspect, alone or in comparision to other business information is the crux of the matter. An absence of disclaimers would be a horrible mistake. Appropriate disclaimers would be a very valuable aid.

  43. 22

    Dennis writes: “As far as I know, no vendor has taken on the task of offering US patent application search results that include only pending applications.” Only the lazy ones. When I do clearance searches, I pop up a window to the Public Pair system. As I find patent applications of interest to the clearance search, I quickly type the number in, a few clicks, and get the filewrapper page to see if it is abandoned. I could automate the whole thing if it was a real hassle. Sure, it would be nice if the PTO brought forward its database technology about 20 years, but until then, pop-up a window and write a macro.

    And you want to include abandoned patent applications in a clearance search (properly noted that they are abandoned) because they can serve as prior art for later pending patent applications.

    At least for software clearance searches, none of this has ever been a problem. Maybe in other fields, but for software, it is fairly straightforward to identify relevant patents and patent applications, determine which ones are too distant to be worried about, determine which ones are either abandoned or expired, and which ones are crap in light of prior art. That leaves a few that lawyer can no his analysis on.

  44. 21

    a very good source of clearance information

    Ida think Iza be holdin off on that thought – given the recent threads on that subject covvered right here at the Big D site.

  45. 20

    As to all of this stuff, the key is to always include in your opinions disclaimers that make it clear that this is an inherently risky bidness.

    That’s the key to practicing law (also inherently a risky business), but it’s not much consolation to your client. Your client wants information he can use to make business decisions, not disclaimers telling him there are risks you can’t possibly quantify and refuse to be liable for.

  46. 19

    Ned asks “How could it be said that if one does not demonstrate “possession” of the invention in his patent application that he can later cobble together claims to that invention in subsequent divisional or continuation patent applications?”

    EPO says generally if you did not claim it when you first showed up at the EPO with your application, you can’t claim it later, regardless of what you disclosed in your spec. I assumed Max was calling this a feature, whereas we Americans call it a bug.

    As to all of this stuff, the key is to always include in your opinions disclaimers that make it clear that this is an inherently risky bidness.

  47. 18

    Finally, just as ex pat guy suggested, it is the disclosure that counts. Even after a patent has issued, the patent owner still has two years to file a reissue application and claim disclosed but unclaimed subject matter he had a right the claim in the first place. One is not truly clear of “new claims” until the patent has been issued for more than two years and no reissue (or other continuation) application has been filed.

  48. 17

    Ping, I think what Maxi had in mind was the written description/new matter doctrine, just as you suggest. How could it be said that if one does not demonstrate “possession” of the invention in his patent application that he can later cobble together claims to that invention in subsequent divisional or continuation patent applications?

  49. 16

    Expat: Just because a patent application is abandoned, it does not mean an unpublished continuing application does not lurk beneath the surface.

    PAIR will show continuity to an unpublished continuation of a published application, though obviously it won’t let you view the file wrapper of the continuation.

    While you’re there, you can also view the most recently amended claims. It’s a bit tedious when you have a lot of applications to check, and there’s always the possibility the claims could be completely rewritten from scratch, but the information is definitely out there.

    Still, unless and until we go with an EPO-type restriction on claim amendments, I think the best approach is sadly to “make judgement calls on where we think the claims will end up as prosecution proceeds rather than actually looking at PAIR”. You’ll need to hire competent people for that.

  50. 15

    There’s still the issue of unpublished applications.

    Also, for what it’s worth, I always assume that if one is going to copy somebody else’s product, that product is covered by patent (application).

    Second, a very good source of clearance information is the prior art cited against the clients own patent applications covering his soon to be introduced product.

  51. 13

    I heart IP: I strongly disagree.

    For the reviewing patent attorney your burden estimation may be true, but for the actual searcher it is not. To do our job properly we need to review the claims of between 1,000 and 4,000 documents which could potentially be infringed. From these, we present 10 to ### to the requesting attorney as being in need of more careful scrutiny. In the networking, biz methods, and some medical areas, 50% of those documents might be PG-Pubs.

    To effectively go through those PG-Pubs quickly, we are forced to make judgement calls on where we think the claims will end up as prosecution proceeds rather than actually looking at PAIR. This is not a job that should be trusted to most searchers (or examiners or attorneys) since it is very much a crystal ball activity.

    I would say to you that if you’re only reviewing a dozen references in your FTO searches, then you’re either being excessively limiting or someone has made the guessing/judgement calls for you (and do you want them doing that?). I know of absolutely no technology that only has a dozen references that need be reviewed.

  52. 12

    I agree with searcher DIP. The main problem is the unavailability of current claims versus those on the record at the time of publication (18mos into prosecution). The 18mos claims are frequently ‘super-broad’ starting claims, not helpful because they have no chance of issuing. Yet, upon the delivery of search results, the client is put on notice of the app and responsible for its claims when/if it issues.

    If the current claims, which are almost always narrower, are viewable they give the searcher and client a much better idea if the reference is relevant, saving the resources of tracking the claim progress of the app.

  53. 11

    I would argue that, if properly identified, abandoned published applications can be valuable in a freedom-to-operate search. It’s only when those records are not identified as such that FTO searches can become clogged. In my experience, the number of finals results (issued and published) in a FTO search is small enough that it’s not a huge time burden to check the file history of published applications. It takes about as much time to check the file wrapper for a published application as it takes to check whether an issued patent is up to date on its maintenance fees. The difference between the two checks is that maintenance fee information is typically provided by big vendors.

  54. 7

    belatedly claiming inventions that they did not have in their possession on their filing date.

    Cepts Maxie – the concept of no new matter already does this. Did ya forget about that?

  55. 6

    PG-Pubs are a complete and unholy disaster from an FTO searching point of view. For art units with 5, 6, and 7 year backlogs, it is basically impossible to tell the wheat from the chaff (read: the Class 700’s).

    The PTO has a vehicle to provide us with current claim status, the dyanamic HTML document associated with every static Tiff/PDF PG-Pub. The dynamic HTML document currently changes when classification changes. All they need to do is put the most recently amended, canceled, or abandoned claims into the dynamic HTML document and everyone will be a winner. (All mechanical and electrical examiners and searchers are searching this HTML data while viewing the Tiff/PDF drawings when doing their job.)

    The big vendors (Thomson, Questel, Minesoft, LexisNexis, etc.) all subscribe to the PTO dataset and receive the updated HTML information already. It would be a minimal amount of work for the vendors to then have the updated claim sets as searchable and presentable information. This would not change the static Tiff/PDFs, but we all know those are frozen in time at 18 months anyway.

    (That said, it would require a few million of the PTO’s recent cash bonanza to do this. And no backlog reduction would occur, so don’t hold your breadth.)

    Max: On a different note… Why does your vaunted EPO insist on having only the A1 claims of US documents available for review on their Espacenet website when issued B2 claims exist? When performing ECLA based FTO searching as a double check on my USPC based searching, this is particularly annoying!

  56. 5

    If you want confidence to invest in new technology, stop applicants belatedly claiming inventions that they did not have in their possession on their filing date.

    Ya mean stop them from claiming what they have a right to? Sure Maxie, the answer is to punish the applicant who already has put forth the effort and submitted an application just to make it easier for later comers.

    Do ya ever think through your positions?

  57. 4

    Dennis, you seem to assume that “the abandonment information” is “so entirely ignored.” That is certainly not the case.

    And your point about cons being published within a few months entirely misses the point. If, at time X, I searched only pending applications, I would completely miss potential application that would be published at X+3 months.

    I think your comments reflect an inexperience with doing FTO searches. Although a list of abandoned patent applications will be helpful, this is information that is included in almost every competent FTO analysis. The list will make it a little easier to identify abandoned aapplications.

    But searching abandoned applications certainly does NOT “unnecessarily clog the results,” as you put it.

  58. 3

    You are both right. Consider how one might clear the European jurisdiction (with 37 EPO Member States). Search WO publications (not being put off by the absurdly broad claims). Weed out all those that were never followed through into the EPO. in what remains, beware the never-ending cascade of one divisisional generation after another. What is of decisive importance is the reservoir of disclosure in the original WO publication, 18 months after the original priority date. That is the basis of your FtO opinion. If you want confidence to invest in new technology, stop applicants belatedly claiming inventions that they did not have in their possession on their filing date.

  59. 2

    Expat – I agree that the abandonment information should be used with caution. At the same time, I don’t think that the abandonment information should be so entirely ignored. Also, although there may be “lurking continuation” those are generally published within a few months of their filing.

  60. 1

    Just because a patent application is abandoned, it does not mean an unpublished continuing application does not lurk beneath the surface. FTO searches focused on published claims are misleading anyway as they will miss disclosure that supports claims that can nail you in coming years, and scare you with those all too familiar ridiculously broad claims that publish but will never make it into an issued patent. I fear that a list of applications that are abandoned will actually do more harm than good if you do not use it correctly. A good FTO analysis is technology-based and focussed on the specification at the outset, not legal claim construction. Each technically relevant family must be followed up with a family analysis of the claims that have issued and are pending (as currently amended).

Comments are closed.