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   how useful is a non-patent literature search?
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   Author  Topic: how useful is a non-patent literature search?  (Read 1508 times)
timcd100
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how useful is a non-patent literature search?
« on: Jan 3rd, 2007, 9:12am »
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How much does a business method patent application benefit from a non-patent
literature search? I read that sometimes prior art for business
method ideas can be found in publications like academic journals,
magazines, books, etc.
 
Does a patent examiner also search outside of patents and into
those areas when examining business methods? In other words can a
nonpatent literature search cover a swath significant enough to
replicate what a patent examiner would do, the way that a patent
facility search can?
 
I'm trying to figure out what exactly someone with a business method would stand to lose by only getting a regular patent search instead of a non-patent literature search as well. Thanks if anyone can help.
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CriterionD
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Re: how useful is a non-patent literature search?
« Reply #1 on: Jan 3rd, 2007, 10:58am »
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Generally speaking, non-patent prior art affects patentability just as much as any patent or patent application.  Well, maybe not, because a patent examiner may be less likely to come across non-patent prior art opposed to "patent" prior art.  But regardless, patent validity is affected all the same.
 
Hence, given the cost of seeking meaningful patent protection, the value of searching non-patent literature is evident.
 
Here is a very general sample of some non-patent literature existing in relation to business methods - Link
 
If you'd like to refine that search, edit the search terms.  Of course, this will only search a few select freely available sources, so while useful I wouldn't call it comprehensive.
 
That being said, no patent search is truly "comprehensive," it is up to you to determine what is reasonably comprehensive.
« Last Edit: Jan 3rd, 2007, 10:59am by CriterionD » IP Logged

www.criteriondynamics.com
Bah-Humbug
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Re: how useful is a non-patent literature search?
« Reply #2 on: Jan 3rd, 2007, 2:33pm »
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The most valiant efforts I've seen in non-patent literature searching were motivated out of concerns toward validity more than allowance.  The concerns included that Examiners may be likely, out of convenience, to rely upon patent literature in constructing rejections whether or not such literature represents the best prior art.  
 
If you share that concern, it's up to the applicants to keep prosecution on track. A hastily constructed rejection might prompt you to make amendments away from less relevant but more available references (patents) and unknowingly toward more relevant but less available references (world literature) ... the kind of less available references that litigants may later be better motivated to find.
 
Where I've seen diligent non-patent literature searching, contentious patent enforcement was expected, and replicating the efforts of the Examiner was not a goal. The goal was to beat the efforts of the Examiner. I'm not of the opinion that the work of Examiners should be held as a highest benchmark.
 
 
 
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timcd100
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Re: how useful is a non-patent literature search?
« Reply #3 on: Jan 3rd, 2007, 3:43pm »
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I don't think I fully understand the benefit of a patent search. I thought that part of the concern is that litigators would find in the prior art something too similar to a claim in your patent. If this happens then that claim is invalid and they win. But does that invalidate the whole patent, even the claims that are not similar to any prior art and are still non-obvious? I assumed that was not the case.
 
 I assumed that if your patent discloses every possible claim that could relate to your invention, and a claim is invalidated by litigation, then all other claims still hold. In such a case I don't see how it would be terribly important to find all prior art just to pointlessly beat a litigator to the punch, if all the other claims that are not found in prior art are still valid.  
 
edit: More generally my question is, what is the benefit of having references in a patent that are the most relevant to your invention? I thought the only risk is that litigators or the examiner will find something that makes a claim obvious and I don't see how the references in your patent directly affect what they might do, because they'd do their own separate searches.
 
 I must be missing something obvious, being this confused.
« Last Edit: Jan 3rd, 2007, 3:57pm by timcd100 » IP Logged
GRS Research
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Re: how useful is a non-patent literature search?
« Reply #4 on: Jan 4th, 2007, 7:02am »
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I think CD and BH have laid out well the two specific goals of a nonpatent literature search; to assist in allowance and, more significantly, to increase your claims' validity post issuance.
 
A third benefit of the npl search is expanding the coverage of your claims by "inventing into" areas that have been neglected.  Many of the inventing teams I've assisted have been able to identify additional problems or inefficiencies that exist in a technological area and solve for them.
 
Re. your confusion, it is true that a specific claim or claims may be invalidated while others remain valid but do you want to risk your most valuable claims being invalidated and being left with a small, “non bottleneck” niche process protected.    
 
BH is correct about the strategic use of the patent search and the need for you to prioritize your goals; get the allowance and get the patent or get the allowance, patent and defend against validity questions 7 years out.
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Norm Gilman
Gilman Research Services, LLC
www.gilmanresearch.com
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