Besides working with Ambercite, I do some IP management work with clients from time to time. As part of this, we were working with a client a couple of weeks ago who was worried about an Australian patent. This patent had been granted in Australia, and a very similar family member had been granted in the US – with the granted US patent having 30 prior art patent citations, and some non-patent literature.
In Australia it can be very difficult to invalidate a patent for anything other than lack of novelty. So we needed a single document that disclosed all of the key features of the granted patent.
So what do we do? As you would expect we did the usual:
- Looked at the cited prior art
- Looked at a list of prior art documents found by the client
- Looked at all of the documents cited against the US family member, and the file wrapper for the US family member
And none of these documents fully disclosed the patent we were trying to invalidate.
Naturally, we also of course involved Cluster Searching in the search. We did this in two ways:
- A general search, in which we added all of the known prior art into a single Cluster Search, and reviewed the results
- A narrow search, in which looked at the closest prior art documents we found in the any of the previous activity – and entered these close patents into Cluster Searching, one at a time, and had a look to see what we could find.
After this, we performed a list and preliminary ranking of the documents found, and asked a patent attorney familar with the case to provide an opinion on what we thought were the most relevant patent
He wrote back and said that one of the patents we found disclosed the main claims in the patent we were trying to invalidate.
Why was Cluster Searching successful when other approaches had failed?
The novelty destroying document was for a process that that a different commercial objective. However in achieving this different commercial objective, this earlier patent had disclosed every essential step of the patent we had been trying to invalidate.
We have seen this before, many manyu times. Conventional patent searching based on keywords is always an inexact process. All searchers are forced to make assumptions on terminology and keywords to make the search process manageable. Often this does work – I was involved in a patentability search this week based on a keyword search, and unfortunately for another client was able to find the exact process we were looking for.
But many other times keyword (and class code) searching by itself does not work – which is why we continue to recommend to all clients to use Cluster Searching to provide a second opinion to their conventional searching processes. Which is exactly what I did above – combined Cluster with conventional patent searching.
This can be confirmed by our many testimonials, including these two:
In 33% of our test cases with AmberScope we were able to find ‘X’ citations, i.e. patents highly relevant to novelty, that we did not find through any other search process we applied“. Patent office.
“I was able to find a patent I had not seen before, even after 20 years in the technical area” – G.S, Patent Attorney
Do you want to find patents missed by others?
If so, please contact us and we will be happy to set up you with trial access. We also offer free sample seaches for patent litigators looking to invalidate problem patents on behalf of their clients or companies.
Photo courtesy of www.gotcredit.com – used with permission.