intellectual property generation - part 21 enma 290: intellectual property generation the initial ip...

Intellectual Property Generation - Part 2 1

ENMA 290: Intellectual Property Generation

The Initial IP Scan

Three Easy Steps to Climbto the Top of the Patent Tree

WUT - Spring, 2007


Stage GateTechnology Developmentand Review

IntellectualProperty

Generation

TechnologyRoadmappi

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Voiceof the

Customer

NewConceptIdeation

An Integrated Strategic Technology Planningand Development Environment

WUT - Spring, 2007


The Initial IP Scan

• During the early stages* of development, you need to do an“initial IP scan”.

• The initial scan should be one element of a generaltechnical literature scan that tells you: - What types of problems are being solved by others, - How the problems are being solved, - Who is solving the problems.

• The initial IP scan is a critical element in formulating the problem and the solutions the team is proposing to develop.

* You should continuously re-scan IP during subsequent project stages.

WUT - Spring, 2007


IP Scan vs. IP Search

• During the preparation of a patent application, it is necessary to do an exhaustive IP search to completely characterize prior art.

• The results of the IP search become part of the patent application.

• The initial IP scan is NOT to be confused with the IP search done in support of a patent application.

• These two processes have totally different purposes:

• Initial IP scan: Guide and stimulate the innovation process,

• IP search: Protect intellectual property.

WUT - Spring, 2007


IP Scan vs. IP Search

• The IP scan can and should be done by the technologists on the project.

• The technologist is often assisted by a search expert.

• The IP search is best done through a patent attorney.

WUT - Spring, 2007


Initial IP Scan Process – IP Database

• A number of tools are available to inventors to conduct patent

searches, including the United States Patent and Trademark Office

(USPTO) search engine found at www.uspto.gov.

• While this search engine is not as sophisticated as many available

products on the market, it is free and accessible to all inventors

with internet access, and is therefore often the search engine of

choice for many inventors.

• The process described here is based on the use of this public

search engine.

WUT - Spring, 2007

http://www.uspto.gov/


Starting an Initial IP Scan

An inventor that has been working in an area for some time typically has a set of key words to use when doing IP scans, and can readily adapt the set for new or changing applications.

• But a new inventor, or an inventor in a new field, often has difficulty “seeding” the initial IP scan.

• What key words should you use?

• With the wrong key words, the result can be, obviously:

• No relevant hits on the initial scan, and/or

• An avalanche of irrelevant hits.

Let us examine a strategy that can help us solve this problem…

WUT - Spring, 2007


Initial IP Scan Process - Strategy

There are three primary elements to the strategy behind the process described here:

1. Focus on the problem, not the solution.

2. Focus on inventors, not inventions.

3. Find the top of the invention tree (most recent patent)and work down (back in time).

Each element translates to a separate step in theinitial IP scan process.

WUT - Spring, 2007


Three Steps of the Initial IP Scan Process:

Step 1: Use key words from problem statements to find a few patents.

Step 2: Use inventor names from these patents to find more, and more recent, patents.

Step 3: Use patent number references on these patents to find more, and more recent, patents.

Use this process to find the most recent relevant patents. Then work back in time through all related patents.

Now lets look at how to do this…

WUT - Spring, 2007


Patent Document Structure

Click here to see an example patent, which shows where to find:

1. Inventor names,

2. Earlier patents that this patent references (“References Cited”),

3. More recent patents referenced by this patent (“Referenced By”).

The third item is needed to find the top of the patent tree.

The second item is needed to help you move back in time once you have used this process to find the top of the patent tree.

WUT - Spring, 2007

WUT - Spring, 2007 Intellectual Property Generation - Part 2 11

Patent - References

Patent - References

Patent - References

Patent - References

Patent - References

Patent - References

Patent - References

When you find a patent, you can use “Referenced By”” to find earlier patents

References Cited

Referenced By


Initial IP Scan Process – Strategy for Step 1

• The process starts with generation of a short list of potentially-appropriate key words and phrases.

• These key words are derived by formulating several statements of the problem being addressed by the inventors.

• Problem statements can be formulated by viewing the problem from the perspective of various “stakeholders”, e.g., individuals:

1. Experiencing the problem,

2. Creating the problem,

3. Paying for the problem (when things go bad),

4. Providing solutions to the problem,

5. Paying for solutions to the problem (fixing source of the problem).

Here’s an example…

WUT - Spring, 2007


Example: When should the engine oil in an auto be changed?

• Stakeholder problem statements:

• The person that owns the car: I don’t like the cost and time of taking my car in for an oil change if it really doesn’t need it, but I don’t want to risk the cost and time of fixing the engine because I didn’t change the oil.

• The person that drives the car: I don’t want to be stranded with a ruined engine because the oil wasn’t changed.

• The person that sells the car: I want to be able to tell people that this car’s engine is extremely reliable, and requires a minimum amount of maintenance.

• The person that maintains the car: What do I do with the oil I just drained out of the car?

This problem is about extending engine oil life.

WUT - Spring, 2007



• Initial key words and phrases (e.g.: “engine oil life”) are extracted from these problem statements.

• These key words are used to do a first search for a small number of patents potentially related to the problem.

• Using problem statements provides a broader base and higher potential relevance in the patents found than if specific solutions or technologies are used as key words.

• This approach prevents researchers from contracting “tunnel vision” during the initial stage of invention.

For the initial IP scan, you want to know all the possible solutions.

For the preceding example, extending engine oil life is a problem (not a solution) with many potential solutions.

WUT - Spring, 2007



• After the first step is completed, a second scan is performed, but this time the inventor names from the patents identified in the first scan are used as key words.

• Inventions are developed by inventors, and the goal here is to identify the inventors working in this field of invention.

• Inventor scans can be repeated until the most recently-issued patents are found, with subsequent scans using thenew inventor names found in the previous scan.

WUT - Spring, 2007



• In the final search step of this process, patent numbers of relevant patents associated with inventor names found above are used as key words in a patent “referenced by” search.

• The patent “referenced by” search finds all the patents issued after the patent you are examining that reference that patent.

• By using inventor names and patent numbers to drive searches, searchers are driven to the top of the invention tree, i.e., to the most recent patents in the target area.

• Once you have this, you can work back to all preceding related patents.

WUT - Spring, 2007


Let’s review the process Initial IP Scan Process…

Step 1: Use key words from problem statements to find a few patents.

Step 2: Use inventor names from these patents to find more, and more recent, patents.

Step 3: Use patent number references on these patents to find more, and more recent, patents.

Use this process to find the most recent relevant patents. Then work back in time through all related patents.

Now lets look at how to do this…

WUT - Spring, 2007


Example Initial IP Scan

• The following provides an example of a step-by-step application of the Initial IP Scan process described above.

• The problem to be solved is:When should the oil in an automobile engine be changed?

• We will use the key phrase “engine oil life”.

So, lets do it!

WUT - Spring, 2007


Notes on this example:

1. The US Patent Office keeps changing their web site, so the screen shots in this example may look different than what you see, but the functions are the same.

2. This example was done about a year ago, so the search results may look different now.

Start your initial IP scanat the US Patent Office:www.uspto.gov

Go to “Patents” to search patents


On the next screen, select “SEARCH”


Use the Quick Search option for yourInitial IP Scan

Everything we do hereshould be done forpublished applications, too.

Or, just go here: www.uspto.gog/patft/index.html

Recently, the USPTO started providing access to filed patent applications as well as issued patents, but this is voluntary.


Here’s the Quick Search screen.

Let’s see what’s in this box…


These are the fields we’ll be interested in for the Initial IP Scan

Step 1Step 1

Step 2Step 2

Step 3Step 3


I start my search on “engine oil life” in

“All Fields”

Step 1


I examine some of these patents.

I find several patents by some guy named Polczynski.

He appears to be an inventor working in this field.

I find 45 patents from this search


Now I search again, this time using

“Polczynski” and “Inventor Name”

Now I search again, this time using

“Polczynski” and “Inventor Name”

Step 2


Here’s a list of Polczynski’s patents:

1 6,380,746 Monitoring fluid condition with a spiral electrode configuration

2 6,377,052 Monitoring fluid condition through an aperture

3 6,278,281 Fluid condition monitor

4 5,910,731 Front end interface circuit and method of tuning the same

5 5,069,213 Oximeter sensor assembly with integral cable and encoder

6 5,041,187 Oximeter sensor assembly with integral cable and method of forming the same

7 4,964,408 Oximeter sensor assembly with integral cable

8 4,926,546 PC board panel configuration technique

9 4,089,584 Multiple station multiplexed communications link employing a single optical fiber

These appear to be relevant patents.So he seems to be an inventor of interest to

us.

WUT - Spring, 2007

Note: these patents are related to “fluid condition”, a more broad category than “engine oil life”. We may want to return to Step 1

and use “fluid condition” as an initial key word.

http://patft.uspto.gov/netacgi/nph-Parser?Sect1=PTO2&Sect2=HITOFF&p=1&u=/netahtml/search-bool.html&r=1&f=G&l=50&co1=AND&d=ptxt&s1=polczynski.INZZ.&OS=IN/polczynski&RS=IN/polczynski










Using Polczynski’s most recent patent number in the “Referenced By” field yields the following Quick Search:

6,922,064 Fluid quality test method based on impedance

6,861,851 Method for on-line monitoring of quality and condition of non-aqueous fluids

6,853,203 Oil quality measurement device

6,850,865 Monitoring automatic transmission fluid condition in real time

6,844,745 Method of determining the fluid condition of diesel engine lubricant during real time operation

6,839,620 Detecting soot during real time operation in diesel engine lubricant

6,771,074 Probe assembly for a fluid condition monitor and method of making same

6,590,402 Engine oil contamination sensor

WUT - Spring, 2007

Step 3

http://patft.uspto.gov/netacgi/nph-Parser?Sect1=PTO2&Sect2=HITOFF&p=1&u=/netahtml/search-bool.html&r=1&f=G&l=50&co1=AND&d=ptxt&s1=6380746.UREF.&OS=REF/6380746&RS=REF/6380746








United States Patent: 6,922,064 - Issued: July 26, 2005

Title: Fluid quality test method based on impedance

Abstract: A system for determining a quality of a fluid includes an impedance cell immersed in the fluid and impedance instrumentation that communicates with the impedance cell. A controller measures a first impedance of the fluid using an electrical signal at a first frequency, measures a second impedance of the fluid using an electrical signal at a second frequency and measures a third impedance of the fluid using an electrical signal at a third frequency. The controller determines a permittivity and a resistivity of the fluid based on the first, second and third impedances. The quality of the fluid is evaluated based on the permittivity and the resistivity.

Inventors: Halalay; Ion C., Schwartz; Ellen Shirley E.

Assignee: General Motors Corporation

Filed: June 18, 2003

WUT - Spring, 2007


So what?!

With just 1 key phrase, “engine oil life”, and using only the “Quick Search” option in the free and universally available USPTO search engine…

We were able to generate an extensive list of potentially relevant and recent patents by conducting the following three searches:

1. Key word and “All Fields” search,

2. Inventor name and “Inventor Name” search,

3. Patent number and “Referenced By” search.

WUT - Spring, 2007


Patent - References

Patent - References

Patent - References

Patent - References

Patent - References

Patent - References

Patent - References

6,380,746 Monitoring fluid condition with a

spiral electrode configuration

6,380,746 Monitoring fluid condition with a

spiral electrode configuration

6,922,064 Fluid quality test method based on

impedance

6,922,064 Fluid quality test method based on

impedance

All Fields = engine oil lifeInventor = Polczynski

All Fields = engine oil lifeInventor = Polczynski


What Next?

• To do a more thorough scan, you can repeat Steps 2 and 3 using inventor names identified in the previous scan.

• This gets you to the top (most recent) patents related to your initial problem.

• Using the patents referenced by these patents, it is possible to go back in time to earlier relevant patents.

• This should provide more than adequate information for aninitial IP scan.

WUT - Spring, 2007


What Can I learn From the Initial IP Scan?

• Many ways that others have solved this problem:

• This tells you what you can’t do,

• But will also stimulate your own creativity in finding new solutions.

• References to other forms of technical literature.

• Who your competitors are (assignee).

• Who the experts in the field are (in case you want to hire one).

• Patent attorneys working in this area (in case you need one).

• How much activity there is in this area (number of patents).

• Trends in work in this area (patent application dates).

• And much, much more!

WUT - Spring, 2007

intellectual property generation - part 21 enma 290: intellectual property generation the initial ip...

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