Posts Tagged: "Prior Art Research"

The China Syndrome: How recent developments in Chinese patents affect U.S. applicants

Chinese patents and patent applications are citable as prior art in most Western countries if they meet the usual criteria regarding publication dates of the cited patent and filing or priority dates of the examined patent. They always have been. However, recent developments have made them more problematic for Western country applicants, especially for independent inventors and small businesses… While in the past an inventor may have decided that it was not worth getting a patent, and many inventions have been forgotten in this manner, there is a large number of people in China who are now encouraged to file patents applications and utility model applications even for the simplest of invention. What we can do as patent agents and attorneys, is to start searching for Chinese documents when doing prior art searches. This may result in bad news for inventors who receive negative patentability reports, but at least they will not spend a lot of money only to have their patent application rejected later.

Manuel Fortin

October 12, 2016

Searching the Art Behind Innovation

For many innovations, in addition to doing a traditional patent search it will be of the utmost importance to search European and east Asian literature, particularly literature from Japan or Korea. The patents issued or published by the USPTO, EPO, KIPO, JPO and SIPO cover more than 90% of the world’s patent documents. But when a particularly lucrative innovation is at stake going beyond the patents can be a worthwhile investment.

Stephan Sangwon Kim

November 7, 2015

Patent Drafting: Identifying the Patentable Feature

Without a patent search you will invariably describe all aspects of the invention with equal importance, although we know from experience that there will always be certain features that deserve greater attention because they will contribute more to patentability. While it is helpful to identify any difference between an invention in the prior art, it is critical to spend the greatest amount of time discussing the features and variations that that will contribute to a patent being issued; that is where the patentable invention resides. This uniqueness will allow you to build a patent application that can lead not only to a patent, but a patent that meaningfully protects the core of what makes the invention unique compared with the prior art.

Gene Quinn

January 17, 2015

I Can’t Find Prior Art for My Invention

It is absolutely critical to understand that a reference, such as an issued patent or published patent application, does not need to be identical to an invention in order for the reference to qualify as prior art. A reference can be used as prior art for whatever the reference explains. For example, if you design 5-wheel transportation device you are going to have to distinguish all other wheeled transportation devices, regardless of whether they are identical. So if a patent examiner finds a 4-wheeled transportation device that will be used against you as prior art. It will be up to you to explain why your 5-wheel device is not obvious in light of the 4-wheel device. The critical question will be this: Why wouldn’t it have simply been obvious to simply add another wheel?

Gene Quinn

December 14, 2013

A Conversation with Article One Partners CEO Cheryl Milone

In December of 2012 Article one Partners (AOP) announced that they would be launching a new program geared towards military veterans. As someone from a family of many military veterans, I hold the utmost respect for anyone who has served in the United States Armed forces. We have been following the program and were thrilled to learn that the program was a success when they announced that Iraq war veteran Jason Maples of Mountain View CA, was the overall Winner of the Article One Partner’s Veteran Program. Renee interviewed AOP CEO Cheryl Milone about her views on the success of the program.

Renee C. Quinn

June 28, 2013

AOP Vets Announces Winner: A Conversation With Jason Maples

On May 16th, AOP announced that Iraqi war veteran, Jason Maples was the winner of its first ever AOP Vets Program. Jason was one of more than 20 other Veterans who participated in the six week program consisting of intensive education and training in patent research, web-based career learning sessions and competitive research projects. Not only did he win a $2,500 cash reward for his success in the study he partook in but also was awarded $5,000 for his overall performance. I had the pleasure of sitting down to talk with Jason recently and following is our exchange:

Renee C. Quinn

June 6, 2013