A New Approach to Patent Searching

Wednesday, June 2, 2010 - 00:00

2010 has certainly brought news and developments regarding litigation involving patent infringement, as well as efforts to improve the patent application and approval process.

Every year, U.S. inventors file 500,000 new patent applications, according to Rep. Lamar Smith (R-Texas), who introduced the Patent and Trademark Office Funding Stabilization Act last month with Rep. John Conyers Jr. (D-Michigan). But there's an estimated patent approval backlog in the U.S. of 700,000 - and an estimated global backlog of patent applications of 4.2 million, as of 2007, according to the Patent Cooperation Treaty (PCT).

Patents are crucial to the innovation process as companies continually develop new ideas in a push to put new products into the hands of consumers. A patent also can prove to a company's shareholders and investors that its research and development is on target. And, no doubt, companies who place a priority on being innovative earn revenue from their patents, through licensing and other arrangements.

Out of this intense, creative environment - and backlog - there's also intense pressure on corporate counsel to stay on top of patent information and to quickly find relevant documents for patent applications and potential litigation.

Patent searching often means inexact results and endless browsing, not to mention sticker shock for clients or budget-minded firms and businesses. That's because it often involves typing a Terms and Connectors query, wading through the pile of research results to identify the relevant document and then endlessly modifying and rerunning your query.

A new tool on Westlaw was built to address a key concern with patent information. Claims Locator is a patent search tool with its eye on the whole claim. With Claims Locator, you aren't handcuffed to your search terms. In the appropriate text box, you can type a patent or patent application number or paste a chunk of text from your own patent or application. Claims Locator then retrieves a preliminary result and integrates additional material such as patent and abstract classification numbers into your search. You retrieve highly relevant documents, which may be related to your own patent or application on many levels. Your result list, which may contain up to 100 documents, is ranked by relevance.

"No two people will agree on how to write a patent claim, likewise, those same two people will come up with different ways to search for the same concept," said Richard Baum, who works in Marketing for IP Solutions. "Claims Locator tries to get beyond this challenge by searching by concepts based upon the search terms entered and then returns results based on relevancy."

Baum sees many opportunities for in-house counsel to benefit from Claims Locator.

"Corporate counsel will use this if they are immersed in the patent application process or if they need to have a better understanding of what has been filed around certain concepts," said Baum. "It is a way to either start patent research or to double-check research to make sure you have not missed a patent or patents in a particular area."

Corporate attorneys also could use Claims Locator as a more targeted way of finding potential licensing technology partners. Patent prosecutors can use it either as a method to evaluate potential claim language prior to filing an application, or as a method to find related patents and applications to a claim approach of interest. And, patent filers can use Claims Locator to search for prior art and "clearance research" in a particular field.

Baum says Claims Locator is just one piece of the IP puzzle being given a lot of attention at Thomson Reuters, Legal.

"We have taken great strides to better serve corporate counsel patent needs," Baum said. "This includes collecting virtually all reported and unreported claims construction (Markman) decisions into one database; providing versioning of patent claims to see how the claims have changed from the application to the final granted patent; developing graphical patent family trees that show patent relationships; providing English translations of Asian patents; and and adding analytical tools within the Thomson Innovation patent search platform that facilitate summarizing and analyzing patent portfolios."

Also new on Westlaw: West's Capitol Watch

West's Capitol Watch - the user-friendly tool in Westlaw Compliance Advisor that identifies and tracks every regulation or bill that's important to you - is now on Westlaw.

If you need to track legislative and regulatory developments in a heavily regulated area, you'll want to use every monitoring tool at your disposal. That means that you'll want access not only to Westlaw but to West's Capitol Watch, too.

Highlights of West's Capitol Watch include:

• Search templates help you search specific document types using the Bills, Regulations, Legislative Materials, and Executive Materials tabs. You can also search bills and regulations simultaneously.

• Results are categorized and displayed for fast browsing and comprehension.

• You can use Graphical Bills to see past, current, and proposed versions of a bill.

• A streamlined alert service can run your searches every day and notify you of developments in a particular area, bill, or regulation.