CC license, Steve Snodgrass, via Flickr.
David Hollander, Law and Legal Studies Librarian at Princeton, and Willow Dressel, Assistant Librarian at Princeton's Engineering and Furth Libraries, gave a talk on Wednesday, February 9th about the history of patents, the complexity of the law behind them, and how one can use this knowledge to perform better patent searches to find patents, and how to conduct historical research on past patents and patent applications.
Hollander began the talk by remarking that the concept of protecting inventions and ideas had been a part of English law for hundreds of years before the existence of the United States. The first idea of something like a patent can be found in laws relating to English craftsmen’s guilds. In the U.S., an inventor's right to an ideal was written into the original version of the Constitution, Article 1, Section 8, Cause 8, by the inclusion of the phrase allowing congress "[t]o promote the Progress of the Useful Arts by securing for limited Times to Inventors the exclusive Right to their Discoveries."
This language authorized Congress from the very beginning to grant and protect patent rights, and the idea of patent protection was passed into law in the first Patent Act of 1790. Since then, these concepts have undergone only three major revisions (with many smaller amendments and changes): patent acts were passed in 1793, 1836, and 1952, the last of which is the version that is still current today.
The U.S. Patent and Trademark Office was formed by Congress to handle the application process for, and granting of, patents. Challenges to patents are handled by the U.S. court system. What are the basic steps involved in securing a patent and what are the results of a successful application?
First, the inventor must prove that he or she has come up with a new, useful and non-obvious process or product.
Second, if the patent is granted, the inventor is entitled to a 20-year period of patent protection. During that time the inventor has the exclusive right to, make, use, or sell the invention.
Hollander continued to say that there are two main views of what a patent represents. First, some view the patent process as a means to ensure further progress and invention by virtue of the fact that patents are made public for others to study. By securing the inventor's rights, disclosure of a new invention can further the state of the art in that particular area. Some others regard the patent process as largely protective of private property, because an inventor has the right to keep any new invention or process secret. The patent process mediates in this case to make disclosure possible through the government's guarantee of 20 years of exclusive rights to the inventor. In both cases, disclosure is a prominent part of the patent process. Patents are by nature public.
The specific terms "new," useful, ““non-obvious,”“process and "product." are critical to understanding patent law. The concept of "process," or "product" is a description of the actual thing being patented. There are several types of patents including “utility,” “design,” “plan,” and other patent types, however utility is by far the most common. A process, a machine, a manufacture, or a composition of matter can constitute the basis for a patent that describes a new process or product. A useful improvement on any of these aspects of invention can also warrant granting a new patent that builds on an older patent. Nothing beyond this list of four categories can be patented. Ideas, for example are not patentable.
Computer-related patents raise an area of ambiguity in patent law, because computers rely upon math and algorithms to operate. Math is regarded as a "law of nature" by the patent process, and until recent decades, was not patentable. Because of this, early inventions in computing were not patentable, although that opinion has relaxed somewhat in recent years, as the lack of protection for inventor’s rights became an obvious detriment to progress in computer technology.
How then is a new patent application examined for viability? According to Hollander, there are three main points of consideration for a successful patent application:
First is novelty. In order to investigate this quality, events that occurred before the patent that might have anticipated its development are examined, and the current state of the art related to the patent in the U.S. and other countries is examined.
Second, the patent must show some degree of minimal usefulness. If a new invention has no perceived use, it cannot be patented.
Third, the patent must be non-obvious. Even if it was never done before, if it is deemed to be an obvious aspect of the art to which it applies, it is not patentable.
Although these criteria might seem very subjective, the Patent Office employs a 3-part test to validate claims of a new patent. The Office examines:
- The scope of prior art
- The difference between the new invention and prior art
- The level of "ordinary skill" required to have come up with the process or product represented by the patent.
Hollander explained that "ordinary skill" is defined by that of an ordinary person who is also skilled in the subject area of the process or product, and if the new patent describes something that would be obvious to someone familiar with that art, it cannot be declared a new invention.
Inevitably, patents are also infringed, challenged, and otherwise questioned, which leads the discussion to the topic of “remedy.” In the instance a new invention is thought by a prior patent holder to infringe on an earlier patent:
- The new patent’s claims are examined against prior art
- The original patent’s is compared to the newly patented invention’s or process’s claims
- The courts decide whether or not an infringement has taken place
Multiple similar patents that are filed at the same time, a process called “an interference procedure,” trying to determine which application has priority.
Hollander cited an example of a complex patent challenge in a current case of Microsoft vs.. a small company, i4i, which successfully sued Microsoft for patent infringement. The courts decided in favor of i4i, and granted a hefty settlement, but Microsoft has twice challenged that decision, arguing that Microsoft knowingly infringed the i4i patent, but that patent was wrongly granted in the first place, and so, was invalid. (The technology in question was the use of custom XML, patented by i4i, and used by Microsoft in Word 2007). Here is a link to i4i’s summary of the case so far. An account of the same case from The New York Times can be found here.) The case is expected to go to the Supreme Court later this year.
A question from the audience about international patents prompted Hollander to explain that patents can be filed in different countries simultaneously, a labor-intensive process. Alternately one can file a patent in any country that abides by the Paris Convention of Industrial Property—which gives the applicant a one-year grace period for filing in other countries.
The third option for international patents, Hollander explained, is to file under the Patent Cooperation Treaty, to which 125 countries have agreed, before filing in any other country. This also gives the inventor a one-year grace period for filing individual patents, but patent applications under this treaty must subsequently be made individually in other countries.
Hollander concluded by showing a patent for “pet display clothing,” a wearable structure that allows a pet owner to carry small pets like gerbils in visible tunnels on his or her body. Despite the extensive, and somewhat ridiculous drawings of the “pet display garment,” the only part of the patent application that mattered in securing this odd patent are the list of claims at the end of the application.
Willow Dressel next explained how to use various web-based searches to find existing patents for research and discovery. For those searching for patents because they want to file their own patent, Dressel recommended engaging a patent professional for the most accurate and comprehensive results. Professionals are best qualified to do these sort of searches of prior art in patents, whether they are a patent attorney, or--in the case of patents arising from work-related inventions at Princeton--the Intellectual Property and Licensing Office, part of the Office of Research and Project Administration at the University. However, a desire to file a patent is not the only reason for doing patent searches, and Dressel explained several resources that aid in doing comprehensive patent searches.
Dressel showed a LibGuide she has made containing a list of links to resources to aid in patent searches for scholarly and historical reasons. For legal advice on patents relating to research, she referred the audience to the website of the Intellectual Property and Licensing Office, cited above, which can advise inventors on patenting inventions and processes that arise from their work at Princeton.
There are many reasons for searching patent literature, for historical research, where as she remarked “patents are a great gateway into the literature of a particular field or technology,” and can simply help to understand how things work. Patents also contain a wealth of information about research, as many corporations do not publicize their research interest, but are obliged to file patents for new discoveries. Each patent contains references to prior patents that relate to that technology. Patents also contain a lot more information about a process or invention than is generally available otherwise. Particularly since the patent office has records of patents since 1790, the literature can provide an unparalleled historical view as well as providing a greater understanding of how certain inventions and processes developed over time.
Dressel emphasized the importance of defining synonyms for search terms describing patents, by thinking of the words that describe an invention or process, and consulting a thesaurus to find similar terms in order to conduct the most productive and complete searches. A huge keyword set will help in making the most fruitful searches. Searching patents, said Dressel, is an iterative process that can be added to as new searches provide more ideas for searching.
Patents can also be searched in a specific field by using the class numbers defined by the U.S. Patent and Trademark Office. Citation searches contain references to patents that refer to other patents, as each patent cites references to other relevant patents.
A Google search for “free patent search tools” revealed several sites of more or less value. The U.S. Patent Trademark Office database is the authoritative guide, with the most current documents, but full-text searches are only available for patents since 1976. Patents from 1790 to 1975 can only be searched by date, classification number, or patent number.
Free Patents Online combines keyword searches for European Patents, and other World Patents, and combines both applications for patents as well as patents in their database, two sources of data that would require separate searches at the U.S. Patent Trademark Office. This resource, however, also has ads.
Google Patents attempts to provide full searching of patent documents from 1790 to the present, but the searches depend upon many documents, some handwritten, that were scanned, and which may miss some terms that were not recognized by the optical character recognition used by the software.
Dressel used Free Patents Online to search for touchscreen technology in mobile devices, using terms “mobile,” “computer,” “input,” “phone,” as search terms. The search revealed that each patent is filed under a code that describes the class of technology that the patent belongs to, and the classifications can be nested by hierarchy into other classifications. As an example, Dressel searched for inventions that might relate to touch-screen input technology for mobile devices. She demonstrated how one needs to think about a variety of search terms that might relate to a touch screen, and discovered a fairly recent patent that contained a large amount of information that could lead in other directions for searches in this area. The search result turned up patent titles and a excerpt of each abstract, listed in order of relevance. Looking at a patent for a “touch screen for a mobile telephone,” revealed a summary of the patent application, its primary class, its inventor, and a PDF of the actual application.
Following the primary class listing, Dressel visited a link to the U.S. Patent Trademark Classification listing for the patent she found, in order to visit the classification homepage to find out more about that classification number. (She pointed out that U.S. classification numbers can be translated into European classification numbers using tools on the Patents Online site, which extends searches to other countries.) Drilling down on the patent classification for “visual display systems” revealed a number of entries in the hierarchy of that classification, as well sub-classes and parent-classes indicating their level within the classification hierarchy. Both patent applications and patents were returned in the search at Free Patents Online.
Dressel concluded by mentioning a catastrophic fire in the U.S. Patent Office in 1836, when all the patents from 1790 to 1836 were destroyed. Only a few--less than 3000--of the lost patents were eventually recovered from other sources, for example patent holders who had a copy of a historic patent. Because of the loss of information, all pre-fire patents were renumbered, beginning with an “X,” to show that they are part of this fragmentary period of record. There are other databases at Princeton, Dressel explained, that help to cover the missing data from pre-fire patents, scans of supporting documentation for lost patents. A special tab on Dressel’s LibGuide labeled “1836 Patent Fire” provides information about how to find information about patents prior to 1836.