Getting the Best Price for Your Patent

- An Inventor’s Guide to Finding and Documenting Evidence of Use

Greg W. Benoit

About Tynax

Tynax has been at the hub of the global patent trade for fourteen years. We are experts at finding evidence of use through publicly available sources and preparing evidence of use charts on our findings. We routinely assess the strength of EoU documentation that is provided by sellers in order to provide patent buyers with a recommendation on whether to pursue or pass on a patent that is being offered for sale. We also work for patent sellers to prepare the evidence of use documentation that is needed to sell their patents. If you have a high tech patent that you want to sell we would like to hear from you.

About the Author

Greg W. Benoit is a Partner at Tynax, a patent brokerage and consultancy located in California. Greg is a Canadian Patent Agent registered to practice before the Canadian Intellectual Property Office and the United States Patent and Trademark Office. He is an Electrical Engineer graduated from the University of Waterloo and is a licensed Professional Engineer in the Province of Ontario.

Greg has 30+ years experience in the high tech sector. Before joining Tynax he held senior IP counsel and engineering roles at several companies including Alcatel-­‐ Lucent, Nortel Networks, Bell Northern Research, and LSI Logic among others. He has spent many years building world-­‐class patent portfolios at Fortune-­‐500 level companies. His hands-­‐on engineering experience enables him to deeply understand a diverse range of technologies. He has been directly involved in the development of over 7000 patents, primarily in telecommunications and computer engineering. He feels fortunate to have worked with hundreds of brilliant inventors over his career, including top researchers from Bell Labs and Bell Northern Research, software developers, hardware engineers, and system architects.

Using his understanding of patent portfolio development and hands-­‐on engineering experience, he has developed many techniques for finding evidence of use of patented technology. Many of those techniques are the subject of this book.

Preface: A Comprehensive Approach

Thank you for your interest in this book and the topic of searching for evidence of use (EoU). Much like detective work, searching for evidence that a patent is in use requires perseverance, imagination, and the ability to make connections between information from many sources. It is a challenging task that requires understanding the invention and the claims that define the intellectual property right, as well as finding information that suggests that the claimed invention is being used, typically without authorization of the patent owner.

This book was written with the patent owner or individual inventor in mind. That is, the searching techniques are directed to starting with a single patent. As the patent owner, it is assumed that you are willing to spend a few hours performing comprehensive search for evidence of use. If you were dealing with a large patent portfolio, it might not be possible to perform such an in-­‐depth search on each patent. More than likely in that case, you would first triage the patents and then perform an in-­‐depth search on only the patents that seem to be the most promising regarding the existence of evidence of use. Your advantage, in having to deal with only one or a few patents, is that you can explore many different leads and techniques in searching for evidence of use of your patent. As well, concerning the topics covered in this guide, your patent is assumed not to be relevant to technical standards set by standards organizations.

According to a recent report1 on the brokered patent market 21% of all patent sellers in 2013 and 2014 were individual inventors.

If you are interested in getting started with your search right away and you already know something about patents, section 6 entitled “Quick Start” would be a good place to start. This section includes a brief background description and the procedures to follow to implement some of the most powerful searching techniques.

It is worth noting that a large majority of patents cover technology that is not in use. Therefore, it is important to know when to stop searching for evidence of use that does not exist. The patented technology may not be a good solution and so it may not be in use, or it may be ahead of its time and may have good potential for the future, even if it is not in use now. Alternatively, the evidence may exist but would require expensive reverse engineering techniques to uncover it. It is therefore important to be able to recognize these situations and conduct your search accordingly, or know when to end it. These topics are covered in section 11 of this guide.

Sincerely,

Greg W. Benoit

Partner Tynax, Inc.

Introduction

The Need for EoU Charts

Infringement is central to many issues related to patents. Locating evidence of unauthorized use of a patent is a key part in arguing for a finding of infringement by a court. Evidence of use is also an important consideration when valuing a patent, for example in determining the monetary size of the market covered by the claims of the patent and therefore the amount of licensing royalties that could potentially be collected.

According to a recent report on the brokered patent market, the sales of patent packages (multiple patents) with EoU versus those with no EoU went from 25% in 2011 to 43% in 2012 and 2013 to 51% in 2014. Anecdotal evidence from brokers is that “EoU is becoming more a standard expectation” (“The Brokered Patent Market in 2014” by Kent Richardson, Erik Oliver and Michael Costa, Intellectual Asset Management January/February 2015). Furthermore, regarding patent packages with EoU the report goes on to say “a broker has about a 25% better chance of a sale if there is EOU. In the tougher market, including EOU seems prudent.”

There are three main types of organization that are interested in Evidence of Use charts. They are:

  • Operating companies
  • Patent assertion entities
  • Patent brokers

Operating companies are companies that provide products and/or services. Their patents typically cover important features of their products/services that give them a competitive advantage. Since a patent provides a right to stop others from making, using, or selling the patented invention, these companies hold patents to stop infringers from taking away their competitive advantage by copying their inventions. In other words, the patents are primarily held to protect the business. Large companies have IP groups that are responsible for creating these patents, as well as enforcing them. In addition to protecting the business, the patents could be used in cross licensing agreements with the company’s major competitors, thereby providing so-­‐called “design freedom” to each company. The concept of design freedom means that the competitors can pursue new products and services that fall within the technology covered by the cross license without fear of being sued for patent infringement by the other. The IP group may also use the patents in out-­‐ licensing to bring in licensing revenues to the company. In all of the above uses, an EoU chart is an enabler because it ties unauthorized use of the invention to a patent.

Patent assertion entities (PAEs) are companies that derive the majority of their revenues from patent licensing and sometimes patent sales as well. The majority of PAEs do not make any products or provide any services, and as such do not infringe on any patents. They exploit this situation to bring patent infringement lawsuits against operating companies that are infringing their patents without any risk of a counter-­‐lawsuit being filed against them. Since the PAE business model is centered on enforcing their patents against infringers, they rely heavily on EoU charts.

Patent brokers are enablers in the buying and selling of patents between operating companies, PAEs and inventors among others. As well as matching patent buyer’s needs with available patents for sale, they also provide an important role in keeping the identity of the patent buyers and sellers confidential. A patent buyer may be an operating company that is planning to start an assertion campaign against its competitors and wants to de-­‐risk the potential for counter attacks by purchasing patents that it may be infringing before launching its lawsuits. Conversely, a buyer could be a company that is being sued, or anticipates being sued, for infringement by a competitor and wants to purchase patents to launch a counter-­‐lawsuit against that competitor. A patent buyer could be a pre-­‐IPO company that wants to bolster its book value by acquiring IP in addition to what it developed in-­‐house. A buyer could be a new entrant to an established market that needs patents to counter any barriers to entry that an incumbent company could create using its own patents. A patent seller could be a company that is exiting a market and no longer needs the corresponding patents, a company that is selling off excess core patents or unneeded non-­‐core patents, or an inventor that is looking for a monetary return on an invention. These examples of motivations for buying and selling patents and the parties involved are but a few of a long list which would also include universities and research organizations, patent defense aggregators, government sponsored patent pools, and so on. Patent brokers often play a role in patent transactions between these entities. Patents with EoU charts are those in highest demand and which command the highest price.

Operating Companies

The main concern for the IP group in most operating companies is to ensure that the core business is adequately protected. An important task in doing that is to assess the patent coverage of its core patents with respect to those of its main competitors. The main competitors could be defined as the two competitors with market share closest to the company, one of which with the next lowest market share compared to that of the company and the other with the next highest market share compared to that of the company. In technology areas where the coverage is deemed to be too low, one solution would be to buy more patents in that area. Alternatively, the company could generate more patents from current research and development (R&D), or accelerate prosecution of its pending applications. Another alternative would be to do so-­‐called “portfolio mining” of its patents to create EoU charts against its competitors. Although this charting would not result in more core patents, it would provide an accurate assessment of which patents could be used against which competitor. This knowledge may lead the company to decide that more core patents are not required because it already possesses sufficient defensive capability with respect to its competitors.

In addition to protecting the core business, IP groups in operating companies have other concerns such as ensuring its IP program is realizing the full intellectual property rights (IPR) potential from the company’s R&D. Besides ensuring that patents are obtained on all important and patent-­‐eligible inventions that fall within the company’s IP strategy, patents may also be obtained on design alternatives considered during the R&D process to block competitors from using them. In some cases, the IP strategy may call for keeping an undetectable invention as a trade secret or to merely publish a technical paper on the invention to prevent a competitor that independently conceives of the invention later from getting a patent on it.

When the patent portfolio is considered on the whole, the IP group needs to ensure that the company is getting the best protection possible for the money that the company spends on its patents. The cost not only includes obtaining the patents initially, but also keeping them in force by paying maintenance fees throughout the life of a patent, as required by the issuing country of each patent. Patents with high maintenance fees, generally US patents 11 years and older, are often dropped if there is no potential for infringement. Performing an EoU search on the patent can assess this potential. Generally, it is possible to create EoU charts on only five percent or less of the patents in a portfolio. However, since the cost of performing an EoU search is comparable to the 12th year maintenance fee of a US patent, the maintenance fee savings realized in dropping old, non-­‐infringed patents could pay for the EoU search. The increased value of patents on which an EoU chart can be created, which increase can be from five to thirty times, is therefore realized without any additional cost.

Companies that want to assert their patents need to assemble patents in groups of six or more patents that are infringed by the target licensee. This so-­‐called “safety in large numbers” aspect to patent assertion stems from the fifty percent chance that any given patent will be invalidated if challenged in court. However, when six or more patents are asserted together the probability that at least one patent of the group survives an invalidity attack is greater than 98%. Therefore, assertion based patent licensing generally involves groupings of six or more patents. Although five percent of all patents in a portfolio can typically be EoU charted, the percentage that can be EoU charted against any given infringing company is much lower. Consequently, assembling an assertion package of six or more patents that are EoU charted against a given company can be a difficult task. Often the task requires mining a large portion of the portfolio, hence large-­‐scale EoU searching needs to be cost effective. When the resulting number of EoU charted patents is too small to form an adequately sized package, prosecution of related pending patent applications may be accelerated to fill the shortfall.

Although operating companies cannot launch counter-­‐attack infringement lawsuits against PAEs that do not make or sell any products or services, they do have three main options to defend themselves. The first is to request a court ruling that they do not infringe the patents, either by requesting a declaratory judgment (in US courts) for a finding of non-­‐infringement or by arguing for a finding of non-­‐infringement when the patent holder launches an infringement lawsuit. The second option, which is often done as well as the first, is to attack the validity of the asserted patents either during court proceedings or by a so-­‐calledInter Partes Review” (IPR) before the Patent and Trials Appeal Board (PTAB) in the case of US patents. A third option, if the company has knowledge of the existence of the subject patents before the PAE can gather evidence of use against the company, is to remove all such publicly available information. This option would require that a third party perform an EoU search on all relevant patents and report the findings to the company so that it could amend or remove the evidence in question. This search would include patents owned by operating companies, PAEs and individual inventors. The search needs to be performed by a third party that can shield the company from knowledge of the patents themselves so as not to trigger the risk of a triple damage award if the company is found to have infringed any of the patents.

Patent Assertion Entities

Patent assertion entities are companies that derive most of their revenues from patent licensing. These companies typically do not make or sell any products or services, which gives them immunity from having infringement lawsuits launched against them. Although PAEs have been depicted unfavorably in the media they often play a role in helping independent inventors obtain some monetary compensation for their inventions, albeit the amount of the proceeds going to an inventor is often a small portion of the total extracted from an infringer. Many recent rulings by US courts seem to reflect a bias against PAEs. New provisions of the American Invents Act (AIA) allow patents to be challenged in IPR proceedings held by the PTAB of the US Patent and Trademark Office (USPTO). The rate at which patent claims are invalided by the PTAB is approximately 80% on average. This invalidation rate means that PAEs need an assertion package of 18 patents to have a 98% chance that at least one patent of the package survives a PTAB review of all of them. In practice, about one third of all PTAB review requests are denied, so a package of 18 patents may have six that are not reviewed by the PTAB at all. However, the validity of these six could later be challenged in court (as well as any that survive the IPR), and with a 50% chance of each patent being invalidated in court the probability that at least one patent remains valid is 98%.

Although the IPR risk would seem to discourage PAEs from assertion based licensing, the low average cost of $266K USD and short turnaround time of 12 months for an IPR, compared to $2.5M USD and 3-­‐5 years of litigation, may have the opposite affect. One consequence of the IPR alternative is that PAEs will need more EoU charted patents to assert to offset patent claim invalidation rates of the IPRs. Furthermore, the predictable average cost of an IPR establishes a price at which both parties of an infringement dispute may choose to settle quickly. A PAE that chooses to adopt a quick settlement approach will need to have a much higher volume of deals, and supporting EoU charted patents, at an average of $266K per patent to bring in the same revenues as before with multi-­‐million dollar lawsuits.

Patent Brokers

Just like real estate agents who deal in real property, patent brokers who deal in intangible property tend to specialize in either representing buyers or sellers. Further, in each category a broker may specialize in buying/selling large groups of patents or small groups. Preparing a group of patents for sale typically involves having EoU charts prepared on as many of the patents as possible because this will yield a higher overall price for the group. In cases where preparation of a complete EoU chart is not possible, for example because sufficient evidence matching each element in at least one claim of the patent was not found, the broker may have a subject matter expert provide a positive opinion on the importance of the patent. A monetary valuation of the group will typically be determined based on the licensing revenues that one could expect from companies to which the EoU charts are addressed and on the size and value of the market addressed by the patents. Clearly, having a high proportion of patents with EoU charts will command top dollar for the group. Typically, buyers want to “cherry pick” the patents with EoU charts from a large group of patents being offered for sale. The buyer will then only want to buy the patents with EoU charts and pay the average per-­‐patent asking price for the entire group. Sellers typically reject this type of offer because the EoU charted patents often represent 80-­‐90% of the asking price of the group. Brokers representing patent buyers may need to arrange purchases from several sellers in order to meet a large buy order. While cooperation between selling brokers to fill such an order may be able to command a higher overall price per-­‐patent, agreement between the patent owners on distribution of the sale proceeds seems to have prevented such arrangements in the past.

Patents with EoU Charts on Companies in Patent Litigation

The buying and selling of patents is largely driven by current or anticipated patent litigation. Companies on both sides of a patent dispute may buy patents to bolster their respective position against the other. Both companies may buy patents to improve their positions against their competitors who are currently on the sidelines. These competitors may also buy patents to improve their respective positions against the companies having the patent dispute, especially if the plaintiff has embarked on a market-­‐wide patent licensing campaign. The patents being purchased are those that are infringed by a company against which a negotiation advantage is desired. Therefore, patents with EoU charts on a given company are of most value to a buyer that can use them to an advantage against that company.

In 2014 there were approximately 5000 patent litigation filings in US courts. Of these approximately 3000 were high-­‐tech, followed by roughly 1000 medical and another 1000 miscellaneous. About half of all of these cases were filed by PAEs. Rational Patent Corporation (RPX) produces a daily litigation report that typically includes 20-­‐30 new patent lawsuit filings in the US courts each business day.

Patent with EoU Charts Needed to Offset PTAB Patent Invalidations

The current state of the US patent environment supports an argument for the increased demand for EoU charted patents to offset patents being invalidated by the USPTO Patent Trial and Appeals Board (PTAB). Currently, the Inter Partes Review (IPR) process of the PTAB has been invalidating patent claims at a rate of approximately 80%. In other words, 80% of all patent claims reviewed in IPRs have been found to be invalid. Typically, a party against which a patent is being asserted will petition the PTAB to grant an IPR of the patent. Approximately, two thirds of all such petitions are granted. Generally, a petition must show that there is new question of patentability at issue regarding a patent, for example a prior art reference that was not considered during prosecution of the corresponding patent application.

This invalidation rate calls for three times the number of patents (18) for a patent licensing package to have the same chance of survival of an IPR as a strong litigation suite of six patents. That is, for there to be roughly a 98.5% chance of at least one patent surviving the validity challenge, at least 18 patents are needed at the outset of an IPR validity challenge versus only 6 patents at the outset of a validity challenge during litigation. This comparison assumes a 50% chance of patent invalidation during litigation. This calculation assumes the worst-­‐case scenario that IPR petitions would be granted on all eighteen patents. If one third of these petitions were declined, then only twelve patents would be required. Nevertheless, the need for larger licensing packages in terms of the number of patents should increase, and consequently the demand for EoU charted patents should as well. Although the cost of challenging 18 such patents would be higher ($4.5M assuming an average cost of $250K per IPR) than the average cost of litigating the set of six patents (average cost $2.5M) the cycle time would be at least one third (12 months versus 3 years), which may increase the overall volume of licensing activity. Furthermore, patent owners whose patents have survived an IPR challenge would be in a much stronger licensing position than otherwise, which may drive down the number of patent lawsuits.

Patents with EoU Charts Needed to Offset Recent US Court Decisions

Recent US court decisions support an argument for the increased demand for EoU charted patents to offset patents that may now be invalid. Particularly, the recent US Supreme court decision on Alice vs. CLS Bank will likely render many US software patents invalid. Consequently, according to some experts, companies may have to take write-­‐downs on the value of these intangible assets on their balance sheets. However, this loss in valuation of their patent portfolios can be counter-­‐ acted by identifying valuable patents in their portfolios that hitherto were unknown as such. Given that an EoU chart can increase the valuation of a patent, companies looking to counteract the affect of the “Alice” decision on their balance sheet may seek to find EoU on more of their patents.

Quick Start

Understanding the Challenge

Before providing some techniques that you can use in your evidence of use search, it will be helpful if you clearly understand your challenge. The first step is to read one of the independent claims of your patent. These are the claims that do not refer to any other claims (alternatively see Figure 1 for an example claim). Now imagine that the claim is describing a product, albeit in general terms and using generic words. In fact, think of the claim as being part of a very poorly written advertisement that is missing the manufacturer’s name, website, and retail information that you would need to purchase this product. Nonetheless, you find the product intriguing and would like to purchase it. Your challenge, armed only with this independent claim, is to find the name of the product, the company that manufactures it, and where it can be purchased. To be sure that the product you have found is in fact the one that you want to purchase, you will need to collect information about the product that confirms it matches the description of it provided by your independent claim. The information is the evidence of use that you will need to complete an EoU chart to show that your patent technology is in use. A complete EoU chart provides a matching of evidence to each clause of the independent claim.

As the inventor, you are no doubt very familiar with your invention and specific implementations of it that you may have made or designed. However, your in-­‐depth knowledge of these implementations could pose a problem for you in finding evidence of use if you adhere strictly to your implementations when conducting your search. That is because each independent claim of your patent was written to cover many different implementations that share the same inventive concept (an example relationship between a claim and implementations that it encompasses is depicted in Figure 2). So as the inventor, you may need to try a little harder than most people to be open minded as to which solutions and products fall within the scope of the claims of your patent when you are searching for evidence.

Six Techniques to Get You Started Quickly

Nub of the Invention

Many patents cover inventions that are improvements on earlier inventions. The improvement in those cases may be referred to as the “nub” or gist of the invention. In other cases the nub of the invention may refer to a key feature, function, or method step, without which the invention would not work, or not provide the advantages that it does.

For example, suppose the invention is an office chair that lessens the impact when a user sits down upon it. The claims of the patent recite a shock absorber mounted in the pedestal of the chair below the seat for this purpose. Searching for evidence that the patented technology is in use would require finding information showing such an office chair that has a shock absorber mounted in the pedestal in a manner as specified by the patent claim. If the patent claim specified that the shock absorber is a hydraulic one, then the evidence would need to show that a hydraulic shock absorber is used.

The important aspect of this approach is that you identify the feature, or nub, that uniquely distinguishes the invention from prior inventions or solutions. If the patented technology is in use, the use must have this feature. Solutions currently available in the marketplace that do not include your “nub of the invention” do not meet the requirements of your patent claim and therefore can be disregarded.

Searching Procedure:

  • Select the independent claim that has the fewest number of words in the claim (the independent claims are the claims that do not refer to otherclaims)

  • Determine the type of product or service that this claim is directed towards e.g. an office chair (look at the pre-­‐amble of the patent claim i.e. the part before the word “comprising” or the words “characterized by”)

  • Determine the nub of the invention (as mentioned earlier this is usually a feature that provides important advantages or enables your invention to solve the problem that it addresses)

  • Perform an Internet search using the words that describe the product or service and the nub of the invention (e.g. “office chair shock absorber”)

  • If you are using Google to search, be sure to look at results from the Web, Images, Videos (especially YouTube) and books results pages

  • Save screenshots of the evidence that relate to the features of the claim as well as the URL links that they came from for later inclusion in your Evidence of Use (EoU) study

If you were unable to find evidence of use for each clause of the claim then try another independent claim. Each independent claim will be different from the others, however in some cases the difference may seem very slight. Examine the clauses for which you were unable to find matching evidence. Check to see if any of these clauses are missing from any of the other independent claims. If so, repeat the search procedure with the independent claim that is missing those clauses and has the fewest words compared to other claims that are also missing those clauses. In some cases, you may decide that the nub of the invention for this new claim is different from that of the previously searched claim. Furthermore, you may decide to use other search terms with this new claim that you did not use in your previous search.

Refer to section 10.2 for more information.

Title of the Invention

One of the main problems in finding evidence of use is bridging the gap between the language used to write patent claims and the language used in sources that describe products and services such as advertisements, marketing brochures and owner’s manuals. For example, a patent claim might use words that can be given a broad interpretation such as: determine, detect and indication; whereas their counterparts used for marketing might be words such as: understand, check and message. Therefore, lifting words directly from a patent claim to be used in an Internet search can lead to poor search results. Not surprisingly, the results may simply be other patents.

One possible way to avoid this problem is to use the main words in the title of the patent. Often, when this technique is combined with a search term that restricts the results to a company of interest (e.g. “site: companyXYZ.com”) the results can be very relevant to the patented invention. Determining companies that may be of interest can be done in many ways. One example technique for determining such companies is covered in section 6.2.3 and 6.2.4 below.

How many words are best to use in your search term? My preference is three words, or four at most. Typically, if fewer words than that are used the results are too general, and if more words than that are used you risk filtering out information that could be important. Generally, using one or two words that describe the product or service and one or two that describe the main inventive feature or concept works well. In addition, including the name of the company that is a good candidate for evidence of use helps to focus the search. Although it is best if the evidence of use is obtained directly from sources of a particular company, e.g. their website, marketing brochures, operating manuals etc., product reviews and press releases can also be helpful sources of information. Simply including a company name in your search term, rather than the company’s domain name, will often result in reviews and press releases that could be useful in your search.

Searching Procedure:

  • Determine the main words of the title of the patent. Typically this means removing words such as method, apparatus, of, the, an, a, etc.

  • Determine potential companies of interest using methods described in sections 6.2.3 and 6.2.4 below or simply based on the nature of the invention

  • Form a search term using the main words of the title and a restrictor to the company of interest. For example, if the patent title is “Method of Removing Plaque from a Dental Appliance” and a company of interest is AllGone Inc, your search term could be “site: allgone.com remove dental plaque” or “site: allgone.com removing plaque dental appliance” or “AllGone remove plaque dentures”

Refer to section 10.3 for more information.

Cited References

Cited references are documents that have been cited by a government Patent Office in relation to a patent. These documents may be patents, patent applications and non-­‐patent literature that are available to the public.

When a patent application is pending with a Patent Office, references are typically cited against the application by a patent Examiner to support rejections against granting the patent. These references are documents that were published before the patent application was filed and are typically referred to as backward citations. The term “backward citation” may be easier to remember if the references are visualized as coming before (or behind) the filing date of the application as marked on a timeline that progresses from left to right. When a patent or patent application is cited against another, later filed application, the later filed application is referred to as a forward citation. The term “forward citation” may be easier to remember by visualizing the filing date of the later filed application on a timeline as being after (or forward of) the present patent/application.

Cited references are important because they provide a link between your patent and those of other patent owners. Some of these patents may cover a product or service that has been commercialized. In the case of a forward citation, the patent could cover an improvement on your invention. However, that improvement may be covered by the claims of your patent, depending on how the improvement is implemented and the wording of the claims. Therefore, forward citations can be an important clue in finding evidence of use. You may be able to find the evidence that you are looking for in information that the patent owner publishes about its product or service. This information could typically be found on the patent owner’s website, in advertisements, marketing brochures, owner’s manuals etc.

Although backward citations are references that were published before the filing date of your patent application, and so their contents are not good sources of evidence of use, the names of the persons and companies who are the authors of these references may be useful to you in your search.

Cited references can be found in several ways. Probably one of the easiest ways is to look up your patent by entering its patent number in Google Patents (https://patents.google.com). The backward citations can be found by following the “Patent Citations” and “Non-­‐Patent Citations” links in the bibliographic information section on the right side of the results page. The forward citations can be found by following the “Cited by” (or “Referenced by”) link in the same section. This is a convenient approach to find the company names of the patent owners because they are listed under the “Applicant” heading in the list of citations. Another approach that could be used for a United States patent would be to look up the patent on the United States Patent and Trademark Office (USPTO) patent number search website (http://patft.uspto.gov/netahtml/PTO/srchnum.htm). In that case the backward citations are given under the heading “References Cited” on the resulting page and the forward citations can be found by following the “Referenced By” link that is beside the “References Cited” heading.

You could think of each forward citation as a “vote” for your solution because another inventor thought the solution, or a similar one, was important enough to file a patent application on. According to that way of thinking, having many forward citations is like having many votes in favour of your idea.

The more forward citations from a given company the more likely that there is significant overlap between your patent technology and theirs, or at least the technology for which that company applied for patent protection. Furthermore, more recent forward citations are more likely to be related to products and services that are still being sold as opposed to older ones. Finally, forward citations from a major company are likely to be more important than those from a smaller company, in terms of the potential amount of revenue addressed by your patent.

Searching procedure:

  • Create a list of the companies that are the owners of the forward citations of your patent

  • Add companies to your list that are the authors of the backward citations of your patent

  • Prioritize your list by the size of company, number of forward citations, then by the age of the citation (i.e. major companies with many recent forward citations will be at the top of your list)

  • Use the company’s domain name as a search term (e.g. site: companyXYZ.com) along with other search terms from the previous sections (e.g. nub of the invention, words in the title of the invention) to perform an Internet search for evidence

  • Search the company’s website directly for additional evidence if your Internet search fails to provide sufficient evidence to complete an EoU study chart

Refer to the section 10.4 for more information.

Other Related Patents

In some cases your patent may not have many cited references. Regarding backward citations, this could be the case if the patent Examiner could not find many references that were similar to your invention. For example, if your invention is a pioneering invention in a new field this could be the case. Regarding forward citations, your patent may not be cited often against patent applications in the same technical field for several reasons including:

Few patent applications are being filed in that technical area

Your patent is not very similar to applications that are being filed in the technical area

Patents or non-­‐patent literature that provide a very thorough review of the state of the art in the technical field of your patent are cited instead of your patent (e.g. patents with extensive background sections, broad summary sections, or descriptions and drawings of many different implementations of their inventions)

If your patent does not have many cited references from which to draw candidate companies for your evidence of use search, you could look for similar patents to your patent by doing a patent search. This can be done in several ways, one of which is to use the USPTO advanced patent search web page and the other is Google Patents.

When using the USPTO advanced patent search web page (http://patft.uspto.gov/netahtml/PTO/search-­‐adv.htm) you can specify the “application date” (APD) and “claims” (ACLM) field identifiers to limit your search to patent applications filed after a certain date and having certain words in their claims. For example, if your patent was the office chair example previously described you might want to search for other patents with the words “office” and “chair” in their claims by using the following search string “ACLM/office AND ACLM/chair”. Furthermore, to limit results to patents that were filed after your patent was granted you could add a date range to the search string. For example, if your patent was granted on January 1, 2001, you might add the following search string “AND APD/01/01/2001-­‐>08/$/2015” to the previous one to limit the results to patent applications filed between January 1, 2001 and August 2015. Note the resulting search string would be “ACLM/chair and ACLM/pedestal AND APD/01/01/2001-­‐>08/$/2015”. By following the links of the resulting patents you can identify the applicant companies, some of which you may decide to use as candidates for your evidence of use search.

Using the Google Patents search page (https://patents.google.com) you would start by entering the number of your patent. On the resulting page you can enter key words in the “Search Terms” field in the upper left hand corner of the page. According to the previous office chair example you might enter the words “chair” and “pedestal” in the Search terms field. By clicking on the “more” link, the “after filing date” field as well as other fields become visible. You could enter the grant date of your patent in the “after filing date field” (e.g. January 1, 2001) as in the previous example. Clicking on the “results” button will provide search results listed by technical area classification code. A link for searching within a classification code area will generally be presented. This technique provides a broader search than the one utilizing the USPTO advanced search previously described because the search terms may be found anywhere in the resulting patent documents as opposed to strictly in the claims as in the previously described method. The links to the resulting patents can be followed to find out the applicant companies that would then be the candidates for your evidence of use search.

Searching Procedure:

  • Using the described methods, find patents that are similar to your patent but were filed after your patent was granted (narrowing your search may be required to come up with a list of similar patents that is manageable – you can expand your search later if necessary)

  • Make a list of the companies that are listed as the Applicants of these patents. These are the so-­‐called candidate companies

  • Prioritize the candidate companies by size and number of similar patents that were found

  • Perform an Internet search using the candidate company names and other search terms (e.g. nub of the invention or words in the title of the patent) and/or search directly on the websites of the candidate companies for the evidence of use that you are seeking

  • If you are using Google to search, be sure to look at results from the Web,Images, Videos (especially YouTube) and books results pages

  • Save screenshots of the evidence that relate to the features of the claim as well as the URL links that they came from for later inclusion in your Evidence of Use (EoU) study

Refer to section 10.7 for more information.

Combinations of the Foregoing Techniques

The foregoing techniques may be combined to provide a quick and effective search for evidence of use. For example, you could use both cited references and a search for patents similar to your patent to come up with a list of candidate companies for your evidence of use search. You might then decide to search directly on the websites of those companies using search terms from the titles of your patent and/or from the claims and nub of your invention. Alternatively, you may choose to perform an Internet search with these search terms first, and optionally using the company name or website as an additional search term, before using the search function on a candidate company’s website.

This quick start chapter covers just a few of the many ways to make connections between the claims of your patent and information on commercially available products and services. After covering some basic information about patents and evidence of use charts, the upcoming chapters of this guide will describe many more searching principles and procedures to add to your arsenal of evidence of use searching techniques.

Refer to section 10.17 for more information.

Patents, Infringement and Trends in the Industry

Patents

Patents are chiefly obtained to protect a business advantage that an invention can provide. A patent provides a “negative” right, in that it is a right to exclude others from making, using, or selling the invention in the jurisdiction covered by the patent. As such, the monetary value of a patent is dependent upon the market over which this exclusive right can be exercised. The patent laws and jurisprudence of the country that has granted the patent govern the exclusive right granted to a patent owner.

Patent Agents and Patent Attorneys must be registered with the patent office of a given country to legally represent clients before that office for the purpose of obtaining a patent. In many countries an inventor may file a patent application directly with the patent office of that country, and provide arguments in favor of having the patent granted to counter any rejections raised against the application by a patent Examiner.

Patents, often referred to as patent specifications before they are granted or filed as patent applications, contain several sections. Each section has a specific purpose. Taken as a whole, the intent of these sections is to clearly teach and claim the invention in its broadest sense as well as describe detailed implementations or embodiments of it. The exclusive right is defined by one or more claims at the end of the patent specification. Each patent claim is written as a single sentence, which can generally be broken down into claim elements in the case of an apparatus claim or steps in the case of a method claim. Before making a complaint to the courts for patent infringement, one generally requires evidence showing that every element or step of a claim can be found in the alleged infringing device or activity.

Patented technology can be licensed to generate licensing revenues, or cross-­‐ licensed to provide so-­‐called design freedom for operating companies. Patents can be bought and sold. Patents are intangible assets, whose monetary value may be reported on a balance sheet, for example when a patent has been purchased. Patents are used as collateral for loans. The annual revenues generated from licensing, trade, and litigation of patents is in the billions of dollars.

Infringement

There are different types of infringement. These types and their definitions vary by country according to the respective patent laws and jurisprudence of each country. Generally, infringement is making, using or selling a patented invention without permission of the patent owner, such as under a license. In many countries offering to sell a patented invention or importing it into the country is also considered infringement. It is up to the patent owner to enforce a patent by suing an alleged infringer in court.

In the United States there are two types of infringement: direct infringement and indirect infringement. In the case of direct infringement, the infringer is the one that performs the infringing activity, i.e. making, using, selling, offering to sell or importing the patented invention. Indirect infringement can be further broken down into two forms: induced infringement and contributory infringement. In the case of induced infringement, the direct infringer is induced by another to perform the infringing activity. For example, the inducer may provide instructions for the assembly, production, or consumer use of the patented invention. In addition to the direct infringer, the inducer is also liable for the infringement. In the case of contributory infringement, the contributory infringer is one who sells, offers to sell or imports something that is material to the patented invention, is especially made or especially adapted for use in infringing the patent, and is not a staple article of commerce suitable for a substantial non-­‐infringing use. As with the inducer, the contributory infringer is also liable for the infringement.

From the perspective of evidence of use searching, understanding that there are different types of infringement is important to how you conduct your search. For example, if you are dealing with a patent claim that would require more than one party to infringe the claim, then you will likely need to search for evidence corresponding to each party. Such could be the case for a claim to a cell phone feature that requires certain functions to be performed by the cell phone and others by the wireless operator’s equipment. In that case you would be looking for evidence from the cell phone maker regarding the cell phone and from the wireless operator regarding the capability of its network. In another example, infringing a patent claim might require that an end-­‐user perform certain actions using a consumer product. In that case, you would focus your search on user instructions provided by the maker of the product.

Similar to the different types of infringement, infringement analysis and what constitutes infringement varies by country, although the underlying principles that govern the protection provided by a patent tend to be similar. Generally, making inconsequential modifications to a patented invention will not avoid infringement. Such modifications could include making substitutions of components, ingredients, or process steps that are substantially equivalent to those of the claims and that do not affect the function of the invention, how it operates, and the result that it achieves. However, determining what modifications qualify as substantially equivalent often requires recourse to the patent specification, the patent application prosecution file, and prior art that was available when the patent application was filed. Needless to say, making such determinations can be complex and involve nuances in the laws and jurisprudence of the country that issued the patent in question. Therefore, advice from a qualified legal professional on such matters is recommended.

Regarding evidence of use searching, the important point about the complexities of infringement analysis is to err on the side of caution. That is, if you are in doubt about whether or not the evidence of use is covered by your claim, then complete the chart with your best available evidence. Better evidence may be obtainable through more in-­‐depth searching, different sources, or reverse engineering. The evidence of use chart that you prepare may be adequate as it is for certain purposes. Qualified legal assistance may be able to make better use of the evidence that you have found already with regard to improving your EoU chart, preparing a claim chart, or preparing an infringement opinion.

Trends in the Industry

Recent changes in the US patent system and court rulings have made it more difficult for patent assertion entities to monetize their patents through licensing. The average selling price of patents is historically low. Some industry commentators are even suggesting that companies take a write down on their balance sheets to reflect the devaluation of their patents, particularly regarding so-­‐called software patents after a recent US Supreme Court ruling that may render those patents invalid.

However, patent filings remain strong and these recent events should increase the need to identify valuable patents that were hitherto unknown. It is possible that patent assertion entities will need to identify and acquire even more patents that are potentially infringed to mitigate the affects of their currently held patents being invalidated. Likewise, operating companies may need to identify valuable patents in their portfolios for cross-­‐licensing, and for financial purposes such as loan collateral and to offset the potential devaluation of software patents on their balance sheets.

Identifying valuable patents is strongly dependent on finding evidence of unauthorized use of the patented technology. However, to date there has been little advancement in techniques employed to find such evidence of use. Typically, an Internet search is done manually for evidence one patent at a time. This is a time consuming approach requiring a person with a high degree of knowledge in the subject area of each patent. Without improvements in these techniques it is likely that evidence of use searching will continue to be a bottleneck in meeting the demand to identify valuable patents.

Evidence of Use (E0U) Charts

Evidence of use searching and reporting is typically done on granted patents using information found on the Internet or otherwise publicly available.

Generally, evidence of use charts provide a mapping of evidence found in relation to a product or service to one or more claims of a patent. The aim of the EoU chart is to show that the evidence falls within the patent claim(s) in question. A person reading the EoU chart should be able to determine whether the evidence presented suggests that the patented technology is in use. If the answer is yes, the evidence and its sources should be helpful in the creation of a claim chart, which could be the next step taken in evaluating the patent.

A claim chart provides a detailed comparison of the evidence to the patent claim in question. Normally, a claim chart individually maps each claim element or step to the corresponding evidence. The claim chart also makes reference to the patent specification and prosecution history to provide an interpretation of the wording of a claim when required. Therefore, a person that has the legal and technical expertise to make such interpretations normally prepares a claim chart. A claim chart is often central to a legal opinion concerning infringement.

In this document an EoU chart is considered to be technical in nature in that it takes the wording of the claims at face value without providing any legal interpretation. An EoU chart is considered primarily as a technical document or study and is often a first step in evaluating a patent for sale, purchase, or licensing. On the other hand, a claim chart is both technical and legal in nature because it often interprets the meaning of the claims according to applicable laws and jurisprudence, which evolve over time. Therefore, preparation of claim charts is best left to persons with the proper technical and legal qualifications.

The EoU chart format is typically a simple two-­‐column format whereas the claim chart format adds a third column to provide a legal interpretation to the wording of the claim. Of course many different formats of both types of charts are used. In some cases a separate page of the chart is dedicated to each claim element (or step in the case of a method claim). The format of EoU and Claim charts depends on the complexity of the claims and detail required to make the in-­‐use argument. As would be expected, this varies from case to case and is at the discretion of the author to use the format that best suits the need.

EoU charts often include both screenshots and URL links to the evidence. Preferably the links are live, in that they can be followed to the web page with the evidence by clicking on the link. Additionally, since web pages and URLs change from time to time, it is advisable to make sure that the web pages containing the evidence have been archived e.g. by the Internet Archive Wayback Machine (https://archive.org/web/). You can check if a web page has been archived by entering its URL into the field at the top of the Wayback Machine’ web page. If the page has been archived you may want to cut and paste the link to the archived web page into your EoU chart. If the page has not been archived yet, you will be prompted with the option to archive it, after which you can enter the link to the archived page.

Sometimes it is not possible to find all of the evidence needed to complete an EoU chart. Normally a complete EoU chart would explicitly provide a mapping of evidence to each element or step in a patent claim. In some cases an incomplete EoU chart can still be useful, for example when there is no other way known in the field of the patent to implement an element or step of a claim, or when a person with common knowledge in that field would understand that the element or step would necessarily be there. However, such cases are generally rare because there is often more than one way to implement a specific function. Providing comments in the EoU chart regarding the missing evidence and suggestions for detecting it given access to the actual product or service would be helpful.

The following are several fictitious example charts to help you with formatting your EoU charts and better understanding what is expected in EoU charts.

8.1 Example EoU Chart 1: Vehicular Computer System

8.2 Example EoU Chart 2: Annotated Maps

8.3 Example EoU Chart 3: Fleet Cards

8.4 Example EoU Chart 4: Medication Dispensing Vending Machine

8.5 Example EoU Chart 5: Scan to Print Service (3 pages)

8.6Example EoU chart 6: Navigational Maps (5 pages)

8.7 Example EoU Chart 7: Repository search Engine

Example EoU Chart 8: Ink Alert Messages

8.8 Example EoU Chart 9: Printer Usage Tracking (3 pages)

8.9 Example EoU Chart 10: LED Tube Light (6 pages)

Finding the Evidence

Difference between Prior Art Searching and EoU Searching

Prior Art

Generally, prior art is publicly available information that existed before the patent application in question was filed. Prior art that is used to show that an invention is not novel (a.k.a. novelty destroying or anticipatory prior art) generally must come from a single document. Prior art that is used to show that an invention is obvious can from several documents. Typically, a lot more effort goes into finding prior art to invalidate a patent than to finding prior art during prosecution of a patent application. A very low percentage of patent applications are denied solely with novelty destroying prior art (i.e. one single reference). Likewise, very few patents are invalidated by a single prior art reference. Usually, several prior art references are used to show that an invention is obvious and therefore the patent on it is invalid.

EoU

Evidence of use must correspond to a single product or service, which typically means one manufacturer or vendor. A possible exception would be use that amounts to contributory infringement, in which case multiple manufacturers and/or vendors may be involved. EoU is somewhat analogous to novelty destroying prior art because they both typically relate to a single product or service. However in the case of EoU, multiple documents may be used to show that the technology covered by a patent claim is in use. A century-­‐old axiom of patent law: "That which infringes, if later, would anticipate, if earlier." Peters v. Active Mfg. Co. (1889), is useful to bear in mind in understanding the relationship between infringement and anticipation. The fact that a low percentage of patents with EoU (<10%) is not surprisingly similar to the low percentage of patents invalidated and applications denied solely because of novelty destroying prior art (i.e. a single prior art reference). Typically, evidence for a complete EoU chart comes from 3 to 4 web pages or sources, and of those 2 out of 3 are typically from the company of interest and the third is from another source such as a product review.

Sources of Evidence

There are many sources of evidence that can be used in your search for EoU. However, for most independent inventors who do not have access to facilities to reverse engineer products or the budget to do so, the Internet will be the main source of evidence. Therefore, your search will focus on publicly available information.

  • Besides relying on your favourite search engine, here are some sources that you should try to make use of in your search:

  • FCC and other sites for regulatory approval

  • YouTube for videos from trade shows and conventions

  • Sites for sharing presentations

  • Google images

  • Product reviews

  • Press releases

  • Trade fairs, conferences, and technical papers

  • Product purchases, teardown sites/reports online (http://www.ifixit.com/Teardown)

  • Publicly available document aggregator sites such as:

    • Scribd.com

    • Docstoc.com

    • SlideShare.com

    • Issuu.com

    • Twidox.com

Some other tips that you might find useful:

  • Search on inventor names of forward citing patents for non-­‐patent literature

  • Look to oppositions after grant for possible infringers

  • Review whitepapers that are linked to a product that you suspect infringes (e.g. linked through product names or trademarks)

Search Engines

While most people are likely familiar with typing a few keywords into an Internet search engine to browse the Internet, you may want to employ a little more savvy in your search for EoU than the casual Internet user. For example, many search engines support advanced search features, which if used properly, could greatly improve the relevance of your search results to the information you are seeking. Here are some examples of advanced search features that are often useful:

Find “All of these words”: is useful to search for content that exactly matches search words that you have selected e.g. from the patent title, main claims, nub of the invention. Some search engines will extend these words to include synonyms, and other forms and spelling of these words. For example, to get an exact search now using Google you need to select “Verbatim” instead of “All results” under the “Search Tools” at the top of your results page. Other search engines support exact word matching by prefixing the word of interest with a “+” operator, or putting the word in double quotes, or in the case of multiple words by using the logical “AND” operator between mandatory search words. Check the advanced functionality description and the “tips” or similar section of your favourite search engine to make sure its behaviour is what you are expecting.

Find “This exact phrase”: can be useful when you have found a phrase that you think describes a product feature that will provide EoU. For example, you may read a unique phrase that describes a product distinguishing feature in a forward citation or related patent (See sections 10.6 and 10.7 for more information on finding and using these types of patents). Searching on the exact phrase should lead you to the product that has the feature in question, and hopefully to the evidence of use that you are seeking. Many search engines support the double quotes operator, which you can use directly in the search term entry field on the search engine’s main page instead of accessing the capability from the engine’s advanced search page.

Find “Without these words”: can be useful to omit patents from your search results. For example, include the word “patent” in this field or add the term “-­‐patent” to your terms in the search term entry field. If the top listed results of your search are mostly patents it may indicate that you are using search words that are too patent-­‐specific and not marketing or user oriented enough. Another reason that your results may be mostly patent oriented would be that your patented technology is simply not being used in the field. Additional searching with different search words should help you determine if this is the case for your patent (see Chapter 11.3 for more information about when to stop searching).

Find “At this domain name”: can be useful to limit the results of your search to be from a specific company’s website. For example, using forward citations and related patents you may have identified companies that are good prospects for finding evidence of use of your patent technology. Limiting your search to these companies, at least initially, can be a quicker way to finding the evidence you need to complete an EoU chart on one of their products. Some search engines (e.g. Google and Ixquick) support the “site:” and “host:” operators for this purpose.

Find “Linked to this domain name or page”: can be useful when you have found a web page that has most of the information that you are looking for in your search, but not enough to complete an EoU chart. By searching for pages that link to this domain or page you may quickly find other pages hosted on the same site that provide the information you need. Additionally, you may find pages hosted on other sites, that while not providing information directly from the company of interest, may provide important clues and perspectives that will lead you to the evidence that you need. For example, the linking page could be a product review, presentation, technical report, blog, etc. that could lead you to a tear down website, YouTube video or image that provides the evidence that you need.

Find “Related to this page”: can be useful when you have found a web page that provides similar information to what you are looking for, but it is not quite covered by the patent claim you are searching. Often when using this feature, which is supported by Google using the “related:” operator, the top search results will be that of another manufacturer that makes a similar product to company of the specified web page. So, if you are having difficulty mapping your patent claim to the products of one company, e.g. as determined by forward citations or related patents, you may easily look for other companies with related products by using this search function.

Metasearch Engines

A metasearch engine is a search engine that aggregates the results of many other search engines. It takes a user query, sends the query to many other search engines, collects the results and presents these results to the user. Typically the results are compiled in some manner that is intended to provide added value to the user. For example, the results may be presented in order of relevance to the query, as determined by agreement in search results among the search engines queried.

One advantage of using a metasearch engine is that doing so is less effort than querying individual search engines with the same query. Furthermore, studies have shown that many of the commonly used search engines’ front-­‐page results agree less than 5% of the time. This suggests that it is important to search using many search engines if you want good search coverage of your query. Using a metasearch engine is therefore an efficient way to get that coverage. However, therein lies a disadvantage to using most metasearch engines in that the user is not typically presented with the results from each search engine queried. If obtaining a complete set of search results is important to you, then making your query with individual search engines is likely a better approach. Furthermore, if you are planning to use complex search query syntax instead of simple keywords, then using individual search engines is likely to be preferable because most metasearch engines do not support complex syntax.

Here are some recommended metasearch engines:

  • Ixquick:
  • https://ixquick.com

    Ixquick has a robust privacy policy (https://www.ixquick.com/eng/company-­‐ background.html?). The policy states that users' IP addresses will not be recorded, identifying cookies will not be used, and personal data will not be collected nor shared with third parties. Ixquick ranks its results according to the number of search engines that agree on each result, whereby more stars are given to results having more search engines in agreement.

  • Dogpile:
  • http://www.dogpile.com

  • SavvySearch:
  • http://www.savvysearch.com

Here are some recommended search engines:

Google

Yahoo!

MSN Search

Ask Jeeves

Searching directly on Company Websites

While performing your EoU search using search engines and metasearch engines on the Internet will usually provide good results, sometimes you may need to perform your search directly on a company’s website. This is because certain web pages on the site may not be found via an Internet search engine for various reasons. For example, a robot.txt file in the root level of the website directory hierarchy could specify that certain files or directories of the website are to be ignored by web crawlers and other web robots that are often used by search engines to categorize and archive websites. The company that you choose for your search could be one that you identified by analyzing cited references and other related patents (see sections 10.4 to 10.8 for more information on these topics).

Searching Techniques

Easily detectable, broad claims

The idea is to identify claims that would be easy to detect if the patented technology is in use. However, detectability is subjective. The concept of Internet detectability is often useful. Internet detectability reflects how easily use of the patented technology could be detected using public resources available via the internet, e.g. marketing literature, user review/reports, “how things work” articles, blogs on reworking or hacking products, application notes, FCC qualifications website, etc. A patent claim with high Internet detectability is one for which a sample of the product suspected of using the patent is not needed. That is because the EoU could be found easily using the Internet. Patents that are standards essential and that have been declared to their respective standards organization have high Internet detectability because the published standard provides the information needed to show evidence of use.

To use this approach, an Internet search is performed for evidence of use by products starting with the claim having the broadest scope and progressing to claims with narrower scope. For simplicity, the number of words in a claim is used in this guide as a measure of the scope of a claim. The rationale for this approach is that adding words to a claim will usually result in adding further restrictions to the definition of the invention as specified by the claim. Furthermore, since evidence needs to be found for each claim element in order to show evidence of use, claims with the fewest number of elements will tend to require the least amount of evidence to complete an EoU chart.

One problem with an unusually broad (short) claim is that the claimed solution may contain a certain feature that would cause the solution to never be used because of being impractical, not cost-­‐effective, or generally undesirable for some other reason. However, the undesirability of the solution may be precisely why such a broad claim was obtainable, that is, because there were no similar solutions in the prior art. Patents with such solutions are sometimes referred to as “McGuffins”. Searching the prior art and becoming knowledgeable about the main problems in the given technical field and the preferred solutions in it will eventually enable one to declare a patent as a McGuffin or not. In some cases the patent may be ahead of its time, in which case it could be added to a watch list for future technical developments. For technical fields in which there are many patents that have been granted over a long period of time, so-­‐called crowded technical fields, the potential for an unusually broad claim to be a McGuffin is higher than with less crowded technical fields. Easily detectable mechanical inventions, especially simple consumer products, may often fall into this area.

Searching Procedure:

  • Identify the independent claims of the patent (the independent claims are the claims that do not refer to other claims)

  • Assess the detectability of each independent claim based on how likely the evidence would be found on-­‐line (e.g. relates to a product or user feature that would be described in marketing literature)

  • Rank the claims with easiest detectability from lowest to highest word count (you can paste a claim into MS Word to easily find out its word count)

  • Start with the highest ranking claim (i.e. easiest detectability and lowest word count) and perform an Internet search for evidence using a few keywords from the preamble (part before the word “comprising”) and elements or steps of the claim

  • Proceed to lower ranking claims as needed

Selection of keywords is important. Try to select keywords that address the detectable aspects of the claim. Often the words used in claims are generic and technology agnostic. To address this problem you could perform an Internet search to find current terminology that is used to describe the concepts and features that relate to the claim. This current terminology would then be used in your Internet search for evidence.

Nub of the Invention

Many patents cover inventions that are improvements on earlier inventions. The improvement in those cases may be referred to as the “nub” or gist of the invention. In other cases the nub of the invention may refer to a key feature, function, or method step, without which the invention would not work, or not provide the advantages that it does.

For example, suppose the invention is an office chair that lessens the impact when a user sits down upon it. The claims of the patent recite a shock absorber mounted in the pedestal of the chair below the seat for this purpose. Searching for evidence that the patented technology is in use would require finding information showing such an office chair that has a shock absorber mounted in the pedestal in a manner as specified by the patent claim. If the patent claim specified that the shock absorber is a hydraulic one, then the evidence would need to show that a hydraulic shock absorber is used.

The important aspect of this approach is that you identify the feature, or nub, that uniquely distinguishes the invention from prior inventions or solutions. If the patented technology is in use, the use must have this feature. Solutions currently available in the marketplace that do not include your “nub of the invention” do not meet the requirements of your patent claim and therefore can be disregarded.

Searching Procedure:

  • Select the independent claim that has the fewest number of words in the claim (the independent claims are the claims that do not refer to other claims)

  • Determine the type of product or service that this claim is directed towards e.g. an office chair (look at the pre-­‐amble of the patent claim i.e. the part before the word “comprising” or the words “characterized by”)

  • Determine the nub of the invention (as mentioned earlier this is usually a feature that provides important advantages or enables your invention to solve the problem that it addresses)

  • Perform an Internet search using the words that describe the product or service and the nub of the invention (e.g. “office chair shock absorber”)

  • If you are using Google to search, be sure to look at results from the Web, Images, Videos (especially YouTube) and books results pages

  • Save screenshots of the evidence that relate to the features of the claim as well as the URL links that they came from for later inclusion in your Evidence of Use (EoU) study

If you were unable to find evidence of use for each clause of the claim then try another independent claim. Each independent claim will be different from the others, however in some cases the difference may seem very slight. Examine the clauses for which you were unable to find matching evidence. Check to see if any of these clauses are missing from any of the other independent claims. If so, repeat the search procedure with the independent claim that is missing those clauses and has the fewest words compared to other claims that are also missing those clauses. In some cases, you may decide that the nub of the invention for this new claim is different from that of the previously searched claim. Furthermore, you may decide to use other search terms with this new claim that you did not use in your previous search.

Title of the Invention

One of the main problems in finding evidence of use is bridging the gap between the language used to write patent claims and the language used in sources that describe products and services such as advertisements, marketing brochures and owner’s manuals. For example, a patent claim might use words that can be given a broad interpretation such as: determine, detect and indication; whereas their counterparts used for marketing might be words such as: understand, check and message. Therefore, lifting words directly from a patent claim to be used in an Internet search can lead to poor search results. Not surprisingly, the results may simply be other patents.

One possible way to avoid this problem is to use the main words in the title of the patent. Often, when this technique is combined with a search term that restricts the results to a company of interest (e.g. “site: companyXYZ.com”) the results can be very relevant to the patented invention. Determining companies that may be of interest can be done in many ways. One example technique for determining such companies is covered in the section titled “Cited References” below.

How many words should you use in your search term? My preference is three words, or four at most. Typically, if fewer words than that are used the results are too general, and if more words than that are used you risk filtering out information that could be important. Generally using one or two words that describe the product or service and one or two that describe the main inventive feature or concept works well. In addition, including the name of the company that is a good candidate for evidence of use helps to focus the search. Although it is best if the evidence of use is obtained directly from sources of a particular company, e.g. their website, marketing brochures, operating manuals etc., product reviews and press releases can also be helpful sources of information. Simply including a company name in your search term, rather than the company’s domain name, will often result in reviews and press releases that could be useful in your search.

Searching Procedure:

  • Determine the main words of the title of the patent. Typically this means

  • removing words such as method, apparatus, of, the, an, a, etc.

  • Determine potential companies of interest using methods described in the section titled “Cited References” below, or simply based on the nature of the invention

  • Form a search term using the main words of the title and a restrictor to the company of interest. For example, if the patent title is “Method of Removing Plaque from a Dental Appliance” and a company of interest is AllGone Inc, your search term could be “site: allgone.com remove dental plaque” or “site: allgone.com removing plaque dental appliance” or “AllGone remove plaque dentures”

Cited References

Cited references are documents that have been cited by a government Patent Office in relation to a patent. These documents may be patents, patent applications and non-­‐patent literature that are available to the public.

When a patent application is pending with a Patent Office, references are typically cited against the application by a patent Examiner to support rejections against granting the patent. These references are documents that were published before the patent application was filed and are typically referred to as backward citations. The term “backward citation” may be easier to remember if the references are visualized as coming before (or behind) the filing date of the application as marked on a timeline that progresses from left to right. When a patent or patent application is cited against another, later filed application, the later filed application is referred to as a forward citation. The term “forward citation” may be easier to remember by visualizing the filing date of the later filed application on a timeline as being after (or forward of) the present patent/application.

Cited references are important because they provide a link between your patent and those of other patent owners. Some of these patents may cover a product or service that has been commercialized. In the case of a forward citation, the patent could cover an improvement on your invention. However, that improvement may be covered by the claims of your patent, depending on how the improvement is implemented and the wording of the claims. Therefore, forward citations can be an important clue in finding evidence of use. You may be able to find the evidence that you are looking for in information that the patent owner publishes about its product or service. This information could typically be found on the patent owner’s website, in advertisements, marketing brochures, owner’s manuals etc.

Although backward citations are references that were published before the filing date of your patent application, and so their contents are not good sources of evidence of use, the names of the persons and companies who are the authors of these references may be useful to you in your search.

Cited references can be found in several ways. Probably one of the easiest ways is to look up your patent by entering its patent number in Google Patents (https://patents.google.com). The backward citations can be found by following the “Patent Citations” and “Non-­‐Patent Citations” links in the bibliographic information section on the right side of the results page. The forward citations can be found by following the “Cited by” (or “Referenced by”) link in the same section. This is a

convenient approach to find the company names of the patent owners because they are listed under the “Applicant” heading in the list of citations. Another approach that could be used for a United States patent would be to look up the patent on the United States Patent and Trademark Office (USPTO) patent number search website (http://patft.uspto.gov/netahtml/PTO/srchnum.htm). In that case the backward citations are given under the heading “References Cited” on the resulting page and the forward citations can be found by following the “Referenced By” link that is beside the “References Cited” heading.

You could think of each forward citation as a “vote” for your solution because another inventor thought the solution, or a similar one, was important enough to file a patent application on. According to that way of thinking, having many forward citations is like having many votes in favour of your idea.

The more forward citations from a given company the more likely that there is significant overlap between your patent technology and theirs, or at least the technology for which that company applied for patent protection. Furthermore, more recent forward citations are more likely to be related to products and services that are still being sold as opposed to older ones. Finally, forward citations from a major company are likely to be more important than those from a smaller company, in terms of the potential amount of revenue addressed by your patent.

Searching Procedure:

  • Create a list of the companies that are the owners of the forward citations of your patent

  • Add companies to your list that are the authors of the backward citations of your patent

  • Prioritize your list by the size of company, number of forward citations,then by the age of the citation (i.e. major companies with many recent forward citations should be at the top of your list)

  • o Use the company’s domain name as a search term (e.g. site: companyXYZ.com) along with other search terms from the previous sections (e.g. nub of the invention, words in the title of the invention) to perform an Internet search for evidence

Using Anticipatory Reference Citations

The idea here is to leverage work already done by Examiners during examination of patent applications filed by others. Basically, the idea is to find patents against which your patent was cited as an anticipatory or “X” reference, the latter being in the case of Patent Cooperation Treaty (PCT) and European Patent (EP) practice. The rationale is that if the citing patent contains claims that are close to the teaching of our patent, but their scope had to be narrowed in view of our patent (e.g. as in the case the third party patent is an improvement on ours), then our patent may cover what was described in the other patent. More significantly, if the other patent was directed to a solution implemented in product and the claims as filed covered that implementation, then our patent may cover the product.

The patent number of the other patent could be used in an Internet search to see if the company used the patent number to mark any of their products. Marking a product to indicate that a given patent covers it is analogous to saying that the product conforms to a certain standard, but in this case the standard is the patent. As a start, in creating the EoU chart the independent claims of the other patent are compared to those of your patent, e.g. the other patent is an “improvement patent” to your patent. This technique should not be limited to active patents but could also be used with pending and even abandoned applications. The reason for the abandonment could have been that rejections based on our patent could not have been overcome. Furthermore, continuations, divisionals, and generally any patents/applications claiming priority from the other patent/application, should be checked. Even patents filed by the same assignee in the same Cooperative Patent Class (CPC) or International Patent Class (IPC) could be relevant. A provisional application on which priority of the subject patent/application is claimed could provide useful clues to help identify the related product covered by the patent.

Sometimes the patent or application is mentioned in a technical paper written by the authors who work for the company that filed the patent application. Further, the website of the company could be searched for products that implement the solution. In rare cases, the actual product name and model number may be mentioned in the other patent.

This approach is difficult to apply to US patents because determining which references were cited against a US patent as anticipatory references would require reading the Office Actions in the patent application file maintained by the USPTO. The electronic version of the patent prosecution file, also known as an image file wrapper, is publicly available online. However, since the information as to whether

a reference was cited as an anticipatory reference or not cannot be easily obtained in an automated manner, the approach may be too time-­‐consuming unless the patents of interest can be narrowed down to a small number before their file wrappers are studied. Furthermore, experience has shown that US Examiners can be less strict in their labelling a reference as anticipatory as compared to European Patent Office (EPO) Examiners. Therefore, the best way to use this approach would be to find PCT/EPO applications and EP patents that cite your patent as an “X” reference. Some IP data services, such as provided by Thompson Innovation, provide the capability to search for patents against which a given patent was cited as an “X” reference. In this case you would specify your patent number in the search and ask for all patents that cited it as an “X” reference.

Searching Procedure:

As mentioned previously, without a subscription to a patent data service the searching procedure to use anticipatory reference citations can be time-­‐consuming. However, if you have the time to try it the results may be worthwhile.

  • Lookup your patent using Google Patents (https://patents.google.com) or on the USPTO website

  • http://patft.uspto.gov/netahtml/PTO/srchnum.htm

  • Access the list of forward citations (citing patents) by clicking on the

  • “Referenced By” link

  • In the case of a US forward citation:

    • Access the USPTO Pair website (http://portal.uspto.gov/pair/PublicPair) and enter the application number, publication number or publication number of the forward citation

    • Click on the tab titled “Image File Wrapper” (typically the 4th tab from the left)

    • In the 2nd column look for document codes starting with “CT” such as CTNF (non-­‐final rejection) and CTFR (final rejection). You can sort the file wrapper by document codes using the up/down arrow icon next to the Document Code heading

    • Select the CTNF and CTFR documents by clicking in their corresponding selection box in the far right hand side column labelled “PDF”

    • Click on the PDF icon to download the selected documents

    • Look for your patent number mentioned in a section titled: “Claim Rejections – 35 USC 102” and wording such as “rejected under U.S.C. 102(a) as being anticipated by … (your patent number)”. If found, perform your evidence search on the company that filed the patent application and their product or service that seems to be described by the application

      • In the case of an EP patent or WO application:

        • Click on the EP patent or WO application link and then click on the link titled “Espacenet” under the heading “External Links” at the bottom of the box of bibliographic information OR access Espacenet directly at http://worldwide.espacenet.com and type the EP patent or WO application number into the “smart search” field near the top of the Web page

        • If there are multiple resulting documents listed selected the EP or WO document that ends in A1, A3 or A9 (meaning the patent search report is included in the document)

        • Click on “Original Document” link in the upper left hand side of the page

        • In the page selection field scroll to the “search Report” section,

        • which is typically at the end of the document

        • In section “C. Documents Considered to be Relevant” of the search report look for your patent number and note its category given in the left hand column. If the category is “X” (meaning your patent was cited as a singular, often anticipatory, reference) perform your evidence search on the company that filed the patent application and their product or service that seems to be described by the application

Using Forward Citations

Regarding searching for evidence of use, the importance of the number of forward citations that a patent has is often debated. The argument against the importance of forward cites states that cases with long and descriptive background sections or other useful descriptions characterizing the prior art are naturally cited more often because of the comprehensive information that they provide. However, it is my experience that these types of cases are rare, probably more so than ever at least with US applications. Recent US practice has been to keep the background section short and not to characterize the prior art, at least not specific references, for fear of creating a risk of being accused of having misled the Examiner if the case is litigated. Further, it is my experience that Examiner’s often cite passages from the Summary section of published applications and patents, probably because this is where the broadest language resides, which would generally be more useful to reject a claim.

You could think of each forward citation as a “vote” for your solution because another inventor thought the solution, or a similar one, was good enough to file a patent application on. Therefore, in a way, having many forward citations is like having many votes in favour of your idea.

The more forward citations from a given company the more likely that there is significant overlap between your patent technology and theirs, or at least the technology for which that company applied for patent protection. Furthermore, more recent forward citations are more likely to be related to products and services that are still being sold as opposed to older ones. Finally, forward citations from major companies are likely to be of more importance because if your patent does read on their product or service, the revenue amount is likely to be much larger than with smaller companies.

Sometimes you may get lucky and find the patent number of one of your forward citations listed in product literature or marked on a product. Providing such patent information on a product or in its associated documentation is usually done as a warning that the product is patented, or that a patent is pending. Such warnings can be helpful in establishing the time period over which patent infringement damages are calculated. However, that potential benefit does not come without risk. By marking the product with patent information, the patent owner has established a link between the patent and the product. If you can link that patent to your patent, for example through a forward citation, you may be led to information about the product that provides the evidence you need to show that your patented technology is used in the product.

Another linkage between a product and a patent may be found in the forward cited patent itself. Sometimes product information to which a patent relates is given in the background and detailed description sections of the patent. Such information can be a very useful hint as to where to start looking for evidence of use.

Searching Procedure:

  • Lookup your patent using Google Patents (https://patents.google.com) or on the USPTO website

  • http://patft.uspto.gov/netahtml/PTO/srchnum.htm

  • Access the list of forward citations (citing patents) by clicking on the

    “Referenced By” link

  • Starting with the most recent forward citations, click on the link to the patent to determine the Applicant or Assignee name (company that owns the patent) or if you are using Google Patents this information is provided in the list of forward citations

  • Focus on patents owned by major companies from which potential licensing revenues could be substantial

  • Read or search the text of the patent looking for clues to the product name or type of product in which the patented technology is used. If you can identify a specific product then perform your evidence search on that

    product using the Internet and/or the company’s website

  • Perform an Internet search using the company name and product name or other characterizing words as well as the patent number of the forward citation. Look at the fine print in documents such as product brochures, marketing literature and operating manuals. Try omitting the patent number and use words such as “protected by”, covered by”, “patents”, “patented” or “patent pending”. If you are unsuccessful using the patent number try using the patent application number, which can be found in the bibliographic section of the patent for both Google Patents and the USPTO web page for the patent.

  • Try to determine if the forward citation patent came from a research organization or a product development organization of the company that filed the patent. To do this you can use LinkedIn to find out more about where the inventor(s) worked in the company when the patent was filed. My experience is that patents coming from product organizations generally cover product features. On the other hand, if the patent comes from a research department the chance that the invention made it into product is far less. If your investigation leads you to believe that the patent came from a product development organization, then you may be on the right track. The next step is to do some more research into the products that were sold a year or so after the patent was filed and similar products that are currently sold. If there is enough potential licensing revenue at stake, you might even be able to justify some basic reverse engineering to determine if your patented invention is being used.

Other Related Patents

In some cases your patent may not have many cited references. Regarding backward citations, this could be the case if the patent Examiner could not find many references that were similar to your invention. For example, if your invention is a pioneering invention in a new field this could be the case. Regarding forward citations, your patent may not be cited often against patent applications in the same technical field for several reasons including:

  • Few patent applications are being filed in that technical area

  • Your patent is not very similar to applications that are being filed in the technical area

  • Patents or non-­‐patent literature that provide a very thorough review of the state of the art in the technical field of your patent are cited instead of your patent (e.g. patents with extensive background sections, broad summary sections, or descriptions and drawings of many different implementations of their inventions)

If your patent does not have many cited references from which to draw candidate companies for your evidence of use search, you could find similar patents to yours by doing your own patent search. This can be done in several ways, one of which is to use the USPTO advanced patent search web page and the other is Google Patents.

When using the USPTO advanced patent search web page (http://patft.uspto.gov/netahtml/PTO/search-­‐adv.htm) you can specify the “application date” (APD) and “claims” (ACLM) field identifiers to limit your search to patent applications filed after a certain date and having certain words in their claims. For example, if your patent was the office chair example previously described you might want to search for other patents with the words “office” and “chair” in their claims by using the following search string “ACLM/office AND ACLM/chair”. Furthermore, to limit results to patents that were filed after your patent was granted you could add a date range to the search string. For example, if your patent was granted on January 1, 2001, you might add the following search string “AND APD/01/01/2001-­‐>08/$/2015” to the previous one to limit the results to patent applications filed between January 1, 2001 and August 2015. Note the resulting search string would be “ACLM/chair and ACLM/pedestal AND APD/01/01/2001-­‐>08/$/2015”. By following the links of the resulting patents you can identify the applicant companies, some of which you may decide to use as candidates for your evidence of use search.

Using the Google Patents search page (https://patents.google.com) you would start by entering the number of your patent. On the resulting page you can enter key words in the “Search Terms” field in the upper left hand corner of the page. According to the previous office chair example you might enter the words “chair” and “pedestal” in the Search terms field. By clicking on the “more” link the “after filing date” field as well as other fields become visible. You could enter the grant date of your patent in the “after filing date field” (e.g. January 1, 2001) as in the previous example. Clicking on the “results” button will provide search results listed by technical area classification code. A link for searching within a classification code area will generally be presented. This technique provides a broader search than the one utilizing the USPTO advanced search previously described because the search terms may be found anywhere in the resulting patent documents as opposed to strictly in the claims as in the previously described method. The links to the resulting patents can be followed to find out the applicant companies that would then be the candidates for your evidence of use search.

Searching Procedure:

  • Using the described methods, find patents that are similar to your patent but were filed after your patent was granted (narrowing your search may be required to come up with a list of similar patents that is manageable – you can expand your search later if necessary)

  • Make a list of the companies that are listed as the Applicants of these patents. These are the so-­‐called candidate companies

  • Prioritize the candidate companies by size and number of similar patents that were found

  • Perform an Internet search using the candidate company names and other search terms (e.g. nub of the invention or words in the title of the patent) and/or search directly on the websites of the candidate

    companies for the evidence of use that you are seeking

  • If you are using Google to search, be sure to look at results from the Web, Images, Videos (especially YouTube) and books results pages

  • Save screenshots of the evidence that relate to the features of the claim as well as the URL links that they came from for later inclusion in your Evidence of Use (EoU) study

Non-­‐Patent Citations

Non-­‐patent citations, also known as other references or non-­‐patent references, can also provide important clues to help you in your evidence of use search. For example, non-­‐patent references that are cited against related patents (found in section 7) and also those cited against forward citations (found in section 6) may be useful. These references could be press releases, product reviews, standards or standards proposals, technical papers, and any other documents that are available to the public. For US patents these references are listed on the front page of the patent. If you are using Google Patents, these non-­‐patent citations can be accessed via a link of the same name in the bibliographic section for the patent. If you are on the USPTO web page for the patent these citations are listed at the end of the “References Cited” section under the heading “Other References”. In cases where a company is related to the reference in some way, e.g. subject of the press release, supporting the standardization work, funding research covered by the technical paper, etc. it may have incorporated the related technology into one of its products. If the claims of your patent are broad enough in scope, they may read on that technology.

Searching Procedure:

  • Use the procedures described in sections 6 and 7 to find forward citations and related patents

  • Check the “Other References” and “Non-­‐Patent Citations” sections for press releases, product reviews, standards or standards proposals, technical papers etc.

  • Perform your evidence of use search on the company and products mentioned in any press releases or product reviews. If the reference is a standard or standard proposal, access the standard to determine companies that authored or supported the standardization work. Check the normative (mandatory) sections of the standard for functionality that is similar to that of your patented technology. Try searching for products that are compliant with the standard by searching using the title or identification number of the standard. If the reference is a technical paper, look for clues in the paper as to products or companies that might use the technology. Try searching on the author’s name and affiliated company or research organization for additional information on the subject such as in slide presentations, videos, etc.

Products compliant with standards

The idea of this technique is to find products that are compliant with standards that are covered by your patent. These are not standards that have been cited as prior art against related patents or patents that cite your patent (i.e. forward citations) since those are covered in section 8 of this chapter. Nor are they standards to which you have made a standards proposal, since it is assumed in this book that your patent does not cover such subject matter. What you are looking for are standards to which patents that cite your patent (forward citations) were declared in an IPR declaration.

The requirement to make IPR declarations that identify specific patents or patent applications that are relevant to a standard or standards development work varies by standard development organization (SDO). Many SDOs make these IPR declarations available online. It is usually possible to check whether a patent or patent application was declared to an SDO by searching their IPR database using the patent or application number or the name of the company or organization to which the IPR belongs.

Obviously, if your patent has many forward citations then searching each of them on the websites of possibly relevant SDOs would be very time consuming. Therefore, you would likely want to limit your search to only those forward citations that clearly relate to a standard or work being done by an SDO. An easy way to do that is to look at the other references (non-­‐patent citations) cited as prior art against those forward citations. If any of the other references are standards or standards proposals, then you could search the IPR declaration database of the corresponding SDO using the patent number, application number or company name of the assignee of that forward citation. If you find that the forward citation was indeed declared against a standard, then the next step is to determine whether any of your patent claims cover any section of the standard. Although finding such coverage may seem like a long shot, it can be successful and is worth checking.

The final step, after you have found a standard covered by your patent, is to find one or more products that are compliant to that standard. This last step is usually not too difficult because the standards that a product complies with are usually listed in product literature such as marketing materials that can be found online. Therefore, an Internet search using the name, number, or title of the standard is usually successful in finding these products.

Searching Procedure:

  • Use the procedures described in sections 6 and 7 to find forward citations and related patents

  • Check the “Other References” and “Non-­‐Patent Citations” sections for

standards or standards proposals

  • Search the online IPR declarations database of the SDOs corresponding to standards related citations (it is important to search using both the patent number and patent application number)

  • For standards to which the forward citation was declared, determine if any of the claims of your patent cover any of the subject matter of that standard. Note that the terminology may be different but the basic concept may be the same. Also be sure to check the date when the subject matter that relates to the patent was first introduced to the SDO e.g. in a draft proposal to the standard. The earliest date of the proposal could predate the published version of the standard by several years and mustnot predate the filing date of your patent or it may eligible as prior art with which to challenge the validity of your patent.

  • For standards covered by your patent, search for products compliant to those standards by performing an Internet search using the name, number, or title of the standard

Acronyms in the Dependent Claims

Given that commonly known acronyms represent frequently used word grouping in the field, e.g. IP, TCP, MPEG their use in a claim results in a claim that is limited to a specific technology. If your dependent claims have such common, technology specific, acronyms (as opposed to those created by the person who drafted the patent), you could check for later generation or new technology that builds on the claimed technology. Sometimes the main claims of a patent are broad enough to read on the new technology. Basically, in this case you are using technology specific wording of the dependent claims to provide clues to search for new technology that you main claims cover.

Using Terms from the Dependent Claims

Wording in the main claims is typically broad and not specific to a given technology or way of achieving a specific function in a given embodiment. However, wording in Web pages, in technical papers and manuals, etc. tends to be specific to the case at hand. One way to overcome this discrepancy is to substitute the broad terms in the main claims with some more specific wording from the dependent claims, to result in a “search claim”. Wording from this “search claim” can be used to build complex search strings to be used with search engines such as Google. Furthermore, the search strings can include synonyms combined in Boolean OR functions.

The words in the main claims may seem too generic as compared to those used in the marketplace to describe currently available products, services and technology. When that is the case, it is often useful to pick important words and phrases from the main claims and look them up in the specification to see if they were given specific definitions or if examples of what is meant by them are given. Generally, this is the case when the person who wrote the main claims was trying to use a word or phrase that encompasses several example implementations of a feature of the invention.

10.12Searching on phrases for Product distinguishing features, Features adjustable during operation, Standards supported features

Product distinguishing features, features that are adjustable during operation and features supported by standards are likely to be described in product documentation, marketing materials, operations manuals, etc. Other solutions that don’t fall into these categories are less likely to be described in publicly available literature or in online materials. Those types of solutions would likely require reverse engineering. Phrases that describe product distinguishing features can be a good way to link patents with products because these phrases may be present in both types of documents, even if other product information (e.g. the product name) was intentionally omitted from the patents. You could therefore look for unique phrases in forward citations (or other related patents that you have identified) and use them to link to a product. For example, you could use such phrases in an Internet search, or a search on that company’s website.

Creating Search Strings

The evidence for an EoU document often comes from many different documents, especially if it relates to a product but also sometimes when it relates to a standard too. If all of the keywords from a claim were entered at the same time into a search engine and an exact match was required, the result would likely be very few, if any, matching hits. That is because the search engine is looking for a document on a server somewhere online that contains all of the keywords. However, with long claims it is unlikely that one document describes all of the elements in the claim. So, the idea is to use search strings that are simple but narrow the results to only what is needed. By including the company in the search string the matching results are narrowed to a given company. Using the term “-­‐patent” instructs the search engine to omit patent documents. Using the operator “date: xx/xx/xxxx” limits the date range of the documents retrieved. Words from the preamble that describe the system, device, function/method (e.g. amplifier) keep the results that match the words from the claim element (e.g. noise filter) relevant to the subject matter of interest.

When searching for related patents (as in section 7) search strings directed to the claims can be useful e.g. when using the USPTO website since it is looking for exact matches of the words. Any slight discrepancy between the search words and the words in the claims of a patent would result in that patent being omitted from the search results. Appendix B provides an example of creating the search strings in Excel for claims that covered certain features of a prosthetic lower limb.

Synonyms of Key Words in the Claims

When searching for EoU it is often useful to try using the nub of the invention and words in the title or preamble and their synonyms. Can use Excel to create exhaustive lists of search strings to “plug into” an Internet search or company website search. Understand how the words used to describe certain functions may change over time and with evolution of technology however the function remains the same. This may not be as important with recently granted patents (e.g. less than 5 years from grant) but could be more important with older patents (e.g. 10 or more years from grant). This is technology dependent. In some technical areas (e.g. mechanical) there may be very little evolution of technical terms whereas in others (e.g. computer and communications) technical terms could be evolving very quickly. For example, cloud computing shares many concepts found in centralized/mainframe computing of many years and more recent client-­‐sever computing models. Likewise, Internet of Things (IoT) technology shares and builds on many concepts found in Supervisory Control and Data Acquisition (SCADA) system used in industry today. Wikipedia is often a good source for a brief history of the development of a given technology and for related keywords.

Recent terminology can also be found in recent forward citations and other related patents. Depending on the technology area, the technology and terminology used may have changed significantly in as little as 5 years, however some of the main concepts remain the same. If you are looking for recent terminology that relates to the main concepts of your patent you could look at the dependent claims of the recent forward citations and recently filed application that are related to your patent, which patents and applications can be determined as described in previous sections. This is because the wording of dependent claims tends to be more implementation-­‐specific whereas the wording of the independent claims tends to be more conceptual or abstract. Therefore, the conceptual wording of the independent claims of your older patent can be related to currently available products and services by looking to the implementation-­‐specific wording of dependent claims of more recent patents that are related to, or that cite, your patent.

You may also want to consult a thesaurus. Often, the wording in an independent claim uses generic words that represent root concepts. Words that are more specific in their nature may be more helpful to your search.

There are some words and phrases that are found often in patent claims such as comprising, detect, ascertain, determine, disposed, adapted to, and operable to. Generally these types of words and phrases, or their equivalents, would not be used

in your EoU search. On the off chance that you do want to search with them, it would be helpful to replace these words with their respective synonyms or meanings, which are more likely to be found in documents such as user manuals, technical papers and websites that are likely to provide the EoU you are seeking. For example the word “detect”, as in detect an error, could be replaced by “notice”, “observe” or “find” in your search. The word “ascertain” could be replaced by “verify”, “check” or “confirm”. The phrases “adapted to”, “operable to” and “configured to” could be replaced by “designed to” or “made to”.

Searching at the Point of Novelty

While it is difficult to exactly determine the point of novelty of a claim in a US patent without comparing the claim to the prior art cited against it during prosecution of the corresponding patent application, often “wherein” and “whereby” clauses at the end of such claims can give a clue to the point of novelty. Often these clauses are added to the original claims to overcome prior art rejections. Likewise, in European patents, which often have claims of a two-­‐part format, the portion of the claim following the “characterized by” wording can provide insight to novel aspects of the invention. Specifically, this wording is meant precisely define how the claim is distinguished over the prior art.

Using wording from the aforementioned clauses as search terms can be a good way to find evidence of use that meets the requirements of the claim. Rather than searching all of the features that are in common with most products of interest, this technique focuses on the distinguishing features of the products that match the distinguishing features of the patent claim being searched.

Litigated Patents

The idea here is to take third party patents used in litigation and check if your patent was ever cited as an anticipatory or “X” reference against that patent, e.g. in the case where the third party patent is an improvement on your patent. If so, it might be possible to map your patent to the alleged infringing product of the litigation. The third party patents that you would check are patents that reference your patent, i.e. forward citations (see section 6 of this chapter). You would check if any of the forward citation patents have been litigated. For US patent disputes this can be done with the PACER system. The USPTO provides links to many other sources of court records regarding patents cases, see: https://www.uspto.gov/patents-­‐maintaining-­‐patent/patent-­‐litigation/resources.

If the patent has been litigated the court docket number should be available from one of the online sources and from that the court files can be obtained. These files normally provide a listing of the alleged infringing products/services. The court record may also have claim maps (depending how far the lawsuit was taken if it was settled or dismissed), which could be useful to create EoU charts for your patent.

Combinations of the Foregoing Techniques

The foregoing techniques may be combined to provide a quick and effective search for evidence of use. For example, you could use both cited references and a search for patents similar to your patent to come up with a list of candidate companies for your evidence of use search. You might then decide to search directly on the websites of those companies using search terms from the titles of your patent and/or from the claims and nub of your invention. Alternatively, you may choose to perform an Internet search with these search terms first, and optionally using the company name or website as an additional search term, before using the search function on a candidate company’s website.

Searching Checklist

If you want to make a really thorough search, it is a good idea to make a search checklist before starting your EoU search and then performing your search based on the list. The following is a list of the more common techniques from this chapter to add to your searching checklist.

Search using:

  • The broadest claim

  • The nub/concept of the invention

  • Words in the title of the patent

  • Cited references

  • Related patents

  • Non-­‐patent citations

  • Terms from dependent claims

  • Synonyms of key words in the claims

  • Claimed point of novelty

  • Litigated patents

  • Technology evolution

Action Plan

Your To Do List

  • Review the patent especially the problem found in the background section, the solution and advantages found in the summary section, and the claims

  • Pick some search keywords from the title, independent and dependent claims

  • Find at least one synonym for each of your keywords

  • Look at forward cited references to determine the companies that filed them, and if you don’t have many FCs, use other related patents and back citations

  • Starting with recent FCs, 5 or less years old, look for unusual wording that may be used in marketing to describe a product feature and look for additional synonyms to your search keywords

  • Search each FC company using your keywords and the company name with metasearch engine, following up on the results to find and save EoU that you find

  • If you think you are close to having enough EoU to complete a chart but can not do so, try searching directly and on the website of the company from which you have found the EoU

  • If you still do not have sufficient evidence to complete an EoU chart, try searching other sources (refer to the “Sources of Evidence” section of Chapter 4)

  • Decide whether you have enough evidence to complete an EoU chart, and if so create one, otherwise determine if it is time to stop searching and document what you have found for future use (See the first section of this chapter for more information on when to stop searching)

You Have Completed an EoU Chart – What’s Next?

Congratulations! Finding evidence of use on a patent and properly documenting it can be a lot of work. However, now that it is done you are ready for the next steps. Firstly, it is not advisable to contact the source of the evidence about your EoU chart. This party may seem like a good potential licensee. However, doing so could cause unintended consequences, like having to be involved in court proceedings initiated by the potential licensee in which it is requesting a judgement that it does not infringe your patent. Most likely the potential licensee will simply not respond to your attempts to communicate with it.

There are two main options for monetizing your patent: 1) licensing it to the potential licensee or 2) selling it to an entity that can realize value from it, such as a competitor to the potential licensee or a non-­‐practising entity. The first option is likely to be difficult because the potential licensee will likely push back and challenge the validity of your patent in an IPR procedure, assuming it is a US patent. Defending your patent in an IPR procedure could cost as much as you could obtain by selling the patent. Often patent owners must launch an infringement lawsuit before the potential licensee will come to the negotiation table, if they will come at all. Financing such litigation is prohibitively expensive for most independent inventors. There are law firms that take on such cases on a contingency basis, but most will ask you to pay ongoing expenses. These expenses can be substantial. Usually contingency lawsuits only make economic sense to a law firm when the expected damage award if you win would be in the millions of dollars. For most independent inventors the second option of selling the patent is a better approach. However, inventors need to be realistic about how much their patents are worth. Most buyers favour patents from corporations and research institutes with good R&D reputations. Additionally, most buyers favour patents with open families, meaning that continuation applications can still be filed to attempt to get patents that better suit their needs. Also, patent families with multiple patents in one or more countries are favoured over a single patent. That being said, now that you have an EoU chart for your patent you are off to a good start.

Many inventors who decide to sell their patents do so through a patent broker. A patent broker can get your patent in front of buyers that are most likely to be interested in buying your patent, besides looking after other aspects of the process like confidentiality agreements, negotiating terms and conditions of the transaction, and arranging that the legal and financial aspects of the deal are properly carried out. However using a patent broker is not the only option. Many corporate buyers and non-­‐practising entities have patent purchase programs, and some have even collaborated recently to run such programs. The best tact for that approach is to do an Internet search first to discover all of your options and then strictly adhere to the guidance under which these programs are run. Typically, this approach will not yield the highest price for your patent.

EoU can be Difficult to Find

Obviously you cannot search for EoU on a patent forever. There comes a time when you need to put an end to your search even though you have not found any EoU yet. Generally the law of diminishing returns apply. After you have exhausted all the possibilities using the techniques covered in Chapter 9 it’s probably time to stop searching. If you have identified a product that you highly suspect is using your invention you could hire a reverse engineering expert analyze the product for EoU. However, unless this requires simple inspection or teardown of the product, it will probably be too costly for the average independent inventor.

Sometimes a claim that looks to be very broad in scope does not seem to be practiced at all in the field. For example the claim could be directed to a car with two engines (e.g. redundant locomotive means). The reason that obtaining such a broad claim was possible could have been that the solution was not needed, too costly or not practical. In some case the invention may be far ahead of its time. It could be worthwhile to set aside the EoU search and to check again later. Returning to the example of the car with two engines/motors, the claim could cover a hybrid vehicle with an electric motor for primary use and a gasoline engine for backup when the electric batteries have insufficient charge to drive the electric motor. Therefore, it is important to also consider the possibility of future use when looking for EoU. Before ending your EoU search make sure to check press releases for news on upcoming product releases and recent research results that may be employed in new products. You may not be able to find evidence of current use of your patented technology, but it may be on the roadmap of future product releases.

It is not possible to complete an EoU chart on all patents. In fact, the percentage of patents that an EoU chart can be completed on is quite low, probably less than 5% in most areas of technology. However, before you give up on your EoU search, even temporarily, it is important to determine why you have not found the evidence. Assuming that you performed a very thorough search and still did not find adequate EoU to complete a chart, consider if your lack of evidence is because your patented solution is not favourable to conditions in the marketplace, or if it has merit but is ahead of its time. Is there some problem with your solution that would make it unlikely to ever be used, at least on a large scale, or is there another more advantageous solution available that would likely be used instead of your solution. Even if you don’t find enough evidence to complete an EoU chart, the results of a comprehensive EoU search should help you better understand the commercialization value of your patent.

Appendix A

12.1Useful Sites http://www.google.com/advanced_patent_search http://catalog.crl.edu/search~S4 http://www.crl.edu/

http://doaj.org/

https://dspace.mit.edu/

http://connection.ebscohost.com/

http://worldwide.espacenet.com/

http://www.ifixit.com/Teardown

Appendix B: Search Term Example

In this example the aim is to create an exhaustive list of search terms to search for patents that had the exact word combinations in their claims. This technique is also useful to come up with search terms made from synonyms of words in your patent claims to perform an Internet search for evidence of use. If you are familiar with Excel it is not very difficult to use it to create all possible search terms from a list of words. You can then choose terms from the list and cut and paste them into a browser to perform an Internet search quickly on many different word combinations.

In the example there are three lists of words: a list of product search words and two lists of feature search words. The first list of feature words provided more product description information. The second list of feature words provided words that were mostly activity related in that they described some way of using the product or what it might do in use.

One way to use the listings would be to randomly select a word from each list and enter those words into a browser to perform an Internet search. After several iterations you would be likely to have searched a broader range of links than if you simply tried a few synonyms that came to mind. Alternatively, you could use Excel to make an exhaustive list of all possible concatenations of three words, one from each list. For this example the result was 816 unique search terms. The resulting set of search terms would then be used in a batch search to find patents, each of which would have at least one of the word combinations in its claims.

Another way to use the lists would be to use logical operators “AND” and “OR” to form a complex search term if the search engine you are using supports complex search syntax. A search query of this format could be AND(OR(product search word list), OR(Feature Search Word 1 list), OR(Feature Search Word 2 list)). Although such a search query is easy to enter in the search engine, the results may include many items that are not very relevant to your search. For example, if a few of the words in your one of your lists are not very relevant to your search you could end up with many results that are not related to the information you are seeking. If these irrelevant items are in the first few pages of your search results, you could have a difficult time finding the information that you seek. In contrast, if you enter the search terms individual you can easily see when a search term is providing irrelevant results and move on to the next search term.

Product(Search(Word

Feature(Search(Word(1

Feature(Search(Word(2

prosthetic

limb

user

prothesis

foot

ascent

artificial

ankle

descent

 

leg

ramp

 

knee

stair

 

joint

dynamic

 

heel

flexion

 

toe

terrain

 

 

response

 

 

responsive

 

 

resistance

 

 

damping

 

 

hydraulic

 

 

spring

 

 

stability

 

 

slope

 

 

sloping

 

 

energy

 

 

plantar

 

 

swing

 

 

stance

 

 

walk

 

 

running

 

 

cycling

 

 

height

 

 

dorsi9flexion

 

 

plantar9flexion

 

 

actuator

 

 

control

 

 

pneumatic

 

 

absorb

 

 

shock

 

 

extension

 

 

extend