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Freedom-to-Operate Search Strategy: Hitting the Target
By
Volume 42, Number 4 - July/August 2018

PROCESS FOR DEVELOPING SEARCH TARGETS

I propose three steps to develop a clear search strategy.

1. Learn like an inventor. Searchers are usually generalists and do not need to understand the details of the matter to the extent a specialist driving the commercialization does. But the searcher needs to take advantage of available resources and consult with the attorney and/ or technical staff in order to understand the overall matter and each individual component.

2. Think like a prosecuting patent attorney. It is very helpful to conceptualize the claims of potentially infringing patents. Remember that attorneys write claims to get the broadest coverage for the applicants while disclaiming the fewest restrictions. Independent claims often cover classes of components and broad conditions. Greater definition and details are provided in dependent claims and in the specification.

3. Strategize like a patent searcher. Target the critical components and focus on claims, while also searching for details in titles, abstracts, and full specifications in full-text sources and indexing in value-added databases, as appropriate.

Let’s consider a few examples of commercial products with multiple components to apply this process for developing effective search strategies.

EXAMPLE: CHEMICAL FORMULATION

Multi-component compositions often come in tubes, buckets, bottles, cans, dispensers, and the like. They may have labels listing just active or toxic components, or they may provide comprehensive lists of ingredients. Personal care products often disclose their many components. Here is a list for a hypothetical anti-dandruff shampoo:

zinc pyrithione, climbazole, ciclopirixolamine, stearyl dimethyl benzyl ammonium chloride, quaternized hydroxyethylcellulose, cocamidopropyl betaine, sodium laureth sulfate, cocamide DEA, imidazolidinyl urea, methylparaben, propylparaben, citric acid, sodium chloride, tetrasodium EDTA, fragrance, and water

These ingredients may be classified as follows:

  • Active ingredients: zinc pyrithione, climbazole, ciclopirixolamine
  • Conditioning agent: stearyl dimethyl benzyl ammonium chloride
  • Suspending agent: quaternized hydroxyethylcellulose
  • Cleansing agents: cocamidopropyl betaine, sodium laureth sulfate
  • Foaming agent: cocamide DEA
  • Preservatives: imidazolidinyl urea, methylparaben, propylparaben, citric acid, sodium chloride, tetrasodium EDTA

The next step is to draft a claim, for search purposes only, that would provide protection for its inventor and exclude your client from manufacturing, using, or selling this formulation:

Claim: A composition for treating human hair comprising an aqueous suspension of a metal salt of pyrithione, an anti-fungal agent, either climbazole or ciclopirixolamine, and optional agents selected from suspension maintaining agents, conditioning agents, cleansing agents, foaming agents, preservatives, colorants, and fragrances

Figure 2B: Six-component search matter as 
A and (B or C) and P

From this I can develop the following search concepts for an FTO search:

Concept 1. Zinc or other metal salt of pyrithione (A). Because claims to the zinc salt as anti-dandruff agent go back to the 1960s, the searcher probably has to be concerned only about the use of the zinc salt in combination with other active ingredients.

Concept 2. An antifungal agent such as climbazole (B) or ciclopirixolamine (C). As it turns out, some patents indicate that zinc pyrithione is also an antifungal agent, so using antifungal agent as a class term may not be helpful.

Concept 3. Anti-dandruff shampoo (P) as described in the preamble may be helpful as a practice area limiter. The searcher can use text terms and patent classifications, if available, to narrow the answer sets. However in this case, zinc pyrithione is not commonly used for other applications, so the practice area restriction is of limited value.

This analysis leads to A + (B or C) + P just as illustrated in Figure 2B. The searcher may want to get approval from the client before pursuing this approach.

EXAMPLE: DEVICE AND METHOD OF USE

The descriptions and uses provided by clients for intended commercial devices almost always involve many parts and many steps, but most of them would be considered well-established in the industry. The key to an appropriate FTO search and FTO opinion is to distinguish the parts, steps, or uses that anybody having ordinary skill in the art would have known about versus those that may have been patented by the competition within the past 20 or so years.

An example of an established technology is a glass melting furnace. There is still plenty of opportunity for inventing and implementing design and process improvements. For example, a client may have identified a need to help ensure that the contents of a furnace do not freeze during a plant mishap, such as an outage of an oxygen production plant or the disruption of oxygen piped in from offsite. The plan would be to provide for local oxygen storage sufficient to cover a limited oxygen outage and implement an automated process to maintain the contents of the furnace in the molten state without adding new glass or removing any product. The maintenance procedure would be for a reasonable limited time until regular operations could resume.

Here are some of the parts for a hypothetical glass melting furnace and a method for operation with provisions to keep it running during a plant upset.

Silica and other ingredients; storage tanks; conveyance means to furnace; furnace for batch operation with melting, refining, and conditioning zones; conveyance of melted glass from the furnace; oxy-fueled burners; oxygen source; backup local oxygen storage; temperature measurement; temperature control means; etc.

The glass melting apparatus is complicated, and there are many process steps. Rather than listing them all as in the shampoo example, we may start out by categorizing them as follows:

  • Materials: silica and additives
  • Vessels: glass furnace with multiple zones, e.g., melting, refining, and conditioning zones; pre- and post-processing storage and conveyance
  • Combustion equipment: oxygen-fueled burners
  • Regular oxygen source: production plant or gas lines from off-site sources
  • Emergency oxygen source: on-site storage
  • Vessel control steps: maintain molten glass and combustion using locally stored oxygen to feed burners to maintain operating conditions during plant upset; postpone material transfer into or out of the furnace during the interim outage period expected to be sufficient to restore regular oxygen source

Here is a conceivable draft claim that an inventor might have applied for and which could be a barrier to the new commercial implementation.

Claim: A method of operating a glass melting furnace, comprising a regular operating mode and a molten glass maintenance mode, wherein the latter is initiated upon detecting an outage of oxygen required to fuel the burners continuously and comprises storing oxygen on-site in sufficient quantity to maintain operation of the glass melting furnace for a minimum period of 12 hours; ceasing the introduction of batch materials and removal of product; and maintaining the molten glass in a molten state in all zones of the furnace by feeding the locally sourced oxygen to active burners such that temperatures in the furnace is maintained at not less than 1100° Celsius.

This could lead to the following search concepts:

Concept 1. Cessation of oxygen and resumption from an alternative source (A)

Concept 2. Keeping glass in a molten state by maintaining minimum furnace temperature (B) or halting any material transfer into or out of the furnace (C)

Concept 3. Design and operation of a glass melting furnace (P)

Once again, a possible search strategy might be A + (B or C) + P, because it might not be necessary for any patents of interest to contain both matters B and C to be of concern to the client.

THE SEARCH PROCESS

After the search target is clarified, the fun part starts— the search itself. The earlier FTO search paper dealt with this principally in the discussion of Rule 3: “Carry out the search in two independent parts.” This is not sufficient to overcome a poorly characterized search target, but it is still an excellent way to proceed with the search. Given the likelihood that two searchers will almost always find different results, an individual searcher can emulate that by carrying out searches with at least two complementary, independent strategies, often by using multiple databases and indexing schemes, or by using completely different methodologies, such text, indexing, patent citation, and natural language searching. Eventually, the searcher would combine results from multiple sources and eliminate duplicates.

Of course, the searcher should take advantage of all opportunities to learn from the search process. It is helpful to start narrow enough to get manageable result sets, for example, by focusing initially on the central area of the Venn diagram. From this and throughout the process, the searcher may discover and apply new or alternative concepts, synonyms, or indexing. The searcher may expand or narrow the search based on content and number of candidate records, but must avoid making erroneous decisions based on creating threateningly large answer sets. That’s where finesse comes in to narrow those sets and still find what is needed.

REVIEW OF CANDIDATE PATENT CLAIMS

The knowledge and skill of the searcher comes to the fore in the post-search evaluation process. In the case of a patentability search, the searcher reviews art—patent documents, articles, etc.—to find the target elements anywhere in the documents. In contrast, when performing an FTO search, the searcher examines claims and supporting specification of patent art—granted patents and pending applications—to identify non-practiced claim elements, i.e., required aspects of the claims that are not going to be practiced by the client.

Take, for example, searching for a three-wheeled vehicle such as a motor tricycle or motorcycle with sidecar. A patentability search would generally report prior art that describes vehicles with three or more wheels, including cars and trucks, because any vehicle having four or more wheels would be considered to contain three wheels. Vehicles with just three wheels would not be novel, unless there were other distinguishing features. However, a patent with claims that require four or more wheels would not be included in an FTO report on the same subject because its claims have elements not found in three-wheeled vehicles, namely extra wheels.

The same would apply to multi-component matters. Disclosure of extra components may adversely affect an inventor trying to argue novelty, but claims of required extra components would, in most cases, allow a business to argue that its commercial operation fell outside the claimed invention because it did not involve those extra components. Care must be taken for claims that allow for optional inclusion or ranges, including those starting at zero percent. In the previous example, a claim to a vehicle with three or more wheels should be reported because those extra wheels could be considered optional for FTO considerations.

The process of choosing whether or not candidate references should be retained is fraught. This led to Rule 4, “Be sure you know why you are rejecting each reference and think twice about it,” and Rule 6, “Expect to defend your search.” In general, there is no need to report patent documents with claims that fall outside the anticipated commercial venture because of extra components or different process conditions, compositional ranges, or the like. However, patent searchers must leave legal decisions to attorneys. Therefore, don’t be too strict in evaluating claims.

Review each claim in light of definitions or clarification of claim language in the specification, especially when claims language covers broad classes or ranges in which the target concept may belong. Be careful about eliminating a patent due to the requirement of an extra component that might be under consideration for inclusion in the commercial venture. Allow for uncertainty and include fudge factors because ranges may be subject to interpretation in litigation proceedings. Allow for circumstances in which the claimed invention could be construed differently. The specification might be written in a way that extra components might be at zero or negligible concentration, but expanded conditions or ranges might be supported by the specification. This could be a matter of legal interpretation, and claims might be amended during the examination process or in post-grant proceedings. Also allow for modest future changes in the commercial process, based on conversations with the client and understanding how close the venture is to actual commercialization. When in doubt, be conservative and retain “close” patent documents. It is always more comfortable to be questioned about why a patent was retained than why it was missed or excluded, even if you have a good answer.

REPORTING

The searcher should always provide a report in a manner most useful to the client, notably the patent attorney for FTO requests, per Rule 5, “Present the results in the fashion that your customer can best use.” Searchers and clients may have different perspectives on the content and format of the final report. I suggest that the report be written well enough to demonstrate the credibility of the searcher in following the client’s instructions and in actually doing what was asked. For this reason, I find it helpful to rephrase the search request, and explain the search strategy and the basis of acceptance or rejection of candidate records.

The report may consist of a simple list of patent numbers. A more detailed report may include the details provided by database records, selected excerpts from documents, or summary data tabulated in spreadsheets. I usually provide selected claims and supporting specification text to facilitate the attorney’s analysis and to justify inclusion of the patent document in the report. It is standard in the United States to avoid offering any patent legal opinions: Just give the facts.


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Thomas E. Wolff (wolffinfo.com) formed Wolff Information Consulting, LLC in 2006 to provide technical and patent information services on a contract basis, following a career at Amoco Chemical Co., BP, Innovene, and Ineos. He has two U.S. patents and is a registered patent agent.

 

Comments? Email the editor-in-chief: marydee@xmission.com

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