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Reading Patents in Depth
Obtaining Technical Information
These tips are for reading patents primarily for what could be called a legal understanding of the information, such as that needed for reviewing the prior art to draft patent applications or to help with freedom-to-operate studies. There is, however, the need for reading patents in depth to obtain technical information, generally for competitive reasons. However, there are as many styles of drafting patent applications as there are patents. Some patents include an apparent encyclopedia of technical information while others include only the briefest of technical details, by design. Regardless of the type of patent, the following four steps can help in reading to obtain competitive information:
Classify the patent claims. What exactly is/are the patented invention(s)? Are there claims to a competitive product or composition, or claims for a method of making the competitive product, or both? Are there claims to a machine or article used in the manufacture of the competitive product? Claims to a competitive product or composition are generally the most valuable because infringement is easiest to detect. Claims to a method of manufacture, or machines used in the manufacture of the competitive product are generally less valuable. Not only is infringement more difficult to detect, but in many instances alternate methods or slightly different machines could be used in the manufacture of the competitive product that would not infringe those patents.
Identify the problem(s) the inventor was trying to solve. In some patents, this is clearly spelled out early in the document, in the background of the invention. In some other patents this is left to the reader to infer from the detailed description, using his own technical knowledge. The reason this step is important is it allows the reader to form a judgment as to the degree to which the invention will solve the problem, and therefore how valuable the invention might be.
Identify the 'technical advance.' Linked with understanding the problem to be solved is the third step of identifying the primary patentable concept or feature. Generally, the patentability of an invention 'turns' on one major thing. It could be a surprising result or dramatically improved performance. If the claim is to a method of making a competitive product, patentability could depend on the addition of only one new step to an existing process. For a machine, it could be the addition or modification of a part that provides some new capability. In essence, this step identifies why the inventor was due a patent on the invention.
Assess the significance of the patented invention. The fourth step is to understand the invention in relationship with the technical field. This can be accomplished by reviewing the patents and publications cited in the prosecution of the patent, or in many instances knowledgeable inventors will already be familiar with many of these cited patents. This step provides additional understanding as to the value of the invention in view of the prior art and to what extent this invention advances the technology.
Conclusion
The volume of e-mail we all get is training most people to simply scan documents in an effort to save time. Unfortunately, when dealing with patents, scanning usually results in missed opportunities and errors. Instead, with patents, we need to apply what Adler opined was the 'real work' of 'active' reading.
H. Jackson Knight ([email protected]) is a Senior IP Associate and IP Team Leader for Dupont's Personal Protection and Advanced Fibers Systems businesses. He is the author of Patent Strategy for Researchers and Research Managers, 2nd Edition (John Wiley & Sons).
Obtaining Technical Information
These tips are for reading patents primarily for what could be called a legal understanding of the information, such as that needed for reviewing the prior art to draft patent applications or to help with freedom-to-operate studies. There is, however, the need for reading patents in depth to obtain technical information, generally for competitive reasons. However, there are as many styles of drafting patent applications as there are patents. Some patents include an apparent encyclopedia of technical information while others include only the briefest of technical details, by design. Regardless of the type of patent, the following four steps can help in reading to obtain competitive information:
Classify the patent claims. What exactly is/are the patented invention(s)? Are there claims to a competitive product or composition, or claims for a method of making the competitive product, or both? Are there claims to a machine or article used in the manufacture of the competitive product? Claims to a competitive product or composition are generally the most valuable because infringement is easiest to detect. Claims to a method of manufacture, or machines used in the manufacture of the competitive product are generally less valuable. Not only is infringement more difficult to detect, but in many instances alternate methods or slightly different machines could be used in the manufacture of the competitive product that would not infringe those patents.
Identify the problem(s) the inventor was trying to solve. In some patents, this is clearly spelled out early in the document, in the background of the invention. In some other patents this is left to the reader to infer from the detailed description, using his own technical knowledge. The reason this step is important is it allows the reader to form a judgment as to the degree to which the invention will solve the problem, and therefore how valuable the invention might be.
Identify the 'technical advance.' Linked with understanding the problem to be solved is the third step of identifying the primary patentable concept or feature. Generally, the patentability of an invention 'turns' on one major thing. It could be a surprising result or dramatically improved performance. If the claim is to a method of making a competitive product, patentability could depend on the addition of only one new step to an existing process. For a machine, it could be the addition or modification of a part that provides some new capability. In essence, this step identifies why the inventor was due a patent on the invention.
Assess the significance of the patented invention. The fourth step is to understand the invention in relationship with the technical field. This can be accomplished by reviewing the patents and publications cited in the prosecution of the patent, or in many instances knowledgeable inventors will already be familiar with many of these cited patents. This step provides additional understanding as to the value of the invention in view of the prior art and to what extent this invention advances the technology.
Conclusion
The volume of e-mail we all get is training most people to simply scan documents in an effort to save time. Unfortunately, when dealing with patents, scanning usually results in missed opportunities and errors. Instead, with patents, we need to apply what Adler opined was the 'real work' of 'active' reading.
H. Jackson Knight ([email protected]) is a Senior IP Associate and IP Team Leader for Dupont's Personal Protection and Advanced Fibers Systems businesses. He is the author of Patent Strategy for Researchers and Research Managers, 2nd Edition (John Wiley & Sons).
Major Differences In UK, U.S. Copyright Laws
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