Thursday, February 18, 2010

Where's My Application and Other Classification Insights

Today's inaugural Business Methods Monday post comes from Sean Henderson. Sean shares some of his insight into the US Patent Classification system and the risks to the inventor who doesn't understand how the patent classification drives where your application is examined. As noted in an earlier post, Sean and his partner in crime, Mike Bowman have reclassified over 11,000 patents and patent applications. The quality standard for their work required a accuracy score of 80% or better. Their work was in the 90 percentile range based on the discriminating review by USPTO Examiners. In short, these guys have an exceptional feel for the subject matter they have reviewed and where it belongs.

Here is Sean's first post.

By now everyone in DC/Virginia has hopefully dug out from the snow dump, amount dependent based on the track of the two colliding fronts in your area. Unlike Vermont, my home of 14 years, DC/Virginia does not have the snow removal equipment...nor can it be justified really, for what was modeled as a 15 to 25 year snowfall you just wait it out until the roads are cleared. Folks here, for the most part, don't run real snow tires on vehicles...nor seem to have figured out this whole stopping and speed thing versus reduced traction thing. That makes driving an interesting spectator long as you are not in the trajectory path of something you would rather avoid.

Michael Bowman and I have been asked to share some observations and mounting concerns that we have encountered, that anyone considering filing a patent application needs to aware of and seriously consider when preparing a patent application. The issues we discuss here are also valid and may have a more adverse impact for those of you whom have been issued what you believe to be a valid patent.

To date, Mike and I have analyzed and reclassified approximately 11,000 published patent applications and patents in Class 705 under a USPTO contract, plus many more that belong in what are loosely know as the computer based technology Classes, such as Class 700, 707, 709, 726, 718 etc., plus some in the mechanical systems and semiconductor manufacturing related Classes.

Reclassification projects at USPTO were driven by a need to provide additional subclass detail within one or more subclass arrays. The goal is to provide finer search granularity detail and to add subclasses for the new art being invented. Once the revised subclass schedule is agreed to, all documents with a Primary or Original Classifications within the one or more subclass arrays must be reclassified and assigned to the proper new subclass. (The Primary Classification is the class/subclass pair that appears in bold on the [52] U.S. Cl. section of a patent application. The Original Classification is the same bold class/subclass pair that appears on a granted patent.)

To classify patent applications and granted patents, each individual claim is classified based on the subject matter it discloses and assigned to a specific class and subclass where that subject matter resides. During classification cross-references to any other applicable class and subclass that apply, for future prior art search purposes are added. Classification of patent applications is done initially by USPTO Classifiers or contracted Classifiers. The Examiner may reclassify the application over the course of the examination, One of the most important things to know is that the primary classification assigned to a patent application as it drives which Group Art Unit at USPTO will examine the patent. For granted patents, it determines who is responsible for the care and feeding of those patents for the purposes of prior art research. The classification determines who will be examining your patent application and where you patent is assigned for the purposes of prior art and validity research.

Here is the problem…a significant number of the published patent applications and patents are misclassified. How significant? Well, wishing to be polite about this…no grading on the curve allowed…an “F” would be a very generous score. Worse, some of the patent applications and patents should never have been classified in the class selected to begin with, much less in the subclass. The real issue of concern is that the classifications and patent bibliography search history, the class/sub class on the patent, is where the Examiner will search for prior art. In many cases it would appear that no search was done for prior art in the classes and/or subclasses where similar claimed subject matter is classified. The Examiner and patent researchers may not always find the right art in the appropriate class. Acknowledging that the Examiner has a full plate, there also seems to be a lack detailed understanding by the Examiners regarding other USPC classes and subclasses outside of their Group Art Unit that include the same or related subject matter. In other cases the Examiner might not have understood what was being claimed which can also result in the patent being classified in an inappropriate classification.

There are some serious implications here. Let’s start by considering what I hope is apparent at this point to those of you considering filing a Patent Application. First, you absolutely need to do your own prior art search, or hire someone with the knowledge in the art to do that for you. There are lots of tools to help you do your searches.

At Coronado Group we use Cognition IP by Coronado Group Ltd, which employs a concept search in conjunction with the US and International patent classification schedules to help you understand where your patent application is likely to wind up when it is examined by USPTO. Using Cognition IP’s copy, paste, search interface, you can dump just the Abstract, any or all the claims, the description or an invention disclosure, or all of the above in as the “concept” to be searched. This returns the patents that are the closest to the text you entered to do your search. A single search looks across the whole published USPTO patent database. The search executes regardless of the subject matter allowing you to search outside your own subject matter expertise. To refine your search, you can add filters to the concept, including Boolean strings to help you do a comprehensive search before you finish writing your claims and filing your application.

Regardless of the tools you use, you need to do the search prior to application filing to determine if there are any published patent applications and patents, that predate and invalidate a part of, or all of your claims. And, you need to look across all of the art, not just subject matter within your comfort zone. There can be prior art in classes and subclasses where one would never expect to find the subject matter…and you need to be looking in all these areas.

Next there are implications here to consider for anyone who holds an issued Patent…or for that matter, for those who have a license agreement, or are paying royalties for the use of patented technology. You also want to be sure that the patents you are licensing are the definitive art covering your technology and products.

During my years working for IBM designing automated systems for their 200 and 300 millimeter ASIC semiconductor manufacturing lines, prior art was diligently searched any and all related art Applications or Patents that touched on what we were building on, were listed in the Application Disclosure. Basically, the research was done for the Examiner and you were directing the Examiner to all the know classes and subclasses that should be researched with the additional references to other published documents of interest. Said another way, by the time we were done, barring someone filing just ahead of us, or there being an unknown published document that negated claims, it was pretty well known up front that the art was indeed unique and should result in a issued Patent. This helped us avoid expensive litigation as well.

Being aware of how the US Patent Classification system works during the preparation and prosecution of your patent application will help insure that your invention is on track to be patented and that granted patents are only given for novel and non-obvious inventions.

We hope to continue sharing our patent experiences and sharing our insight on the risks and challenges of prosecuting a patent application as seen from the vantage point of having read and reclassified so many patents.

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