How we found references in non patent literature without performing an NPL search?
Prior art search is a big part of the work we do.
When we started, we were convinced that prior art searches should never be run with a set framework where only the following few defined steps will lead to a result.
Since X type results can be anywhere and they do not follow a set pattern, a searcher should not follow standard steps.
He should be flexible and adapt according to situations. He should have a realization that strategies that worked in the last search for a similar kind of patent, may not work for the current one.
Let me share a recent example with you.
We (me and my team member Navneet) had this patent related to the NFC scanner shared with us to find the references that can invalidate it. The subject patent had claims focused on the circuit diagram with different circuit elements along with their function.
While searching for the patents, we identified one reference which seemed relevant. In that reference, a processor name was mentioned but other critical details were missing.
We considered it a great lead and thus quickly changed our strategy and started looking for the datasheets of the processor. We performed a deep-dive and found that the datasheet included an internal I/O circuit describing the tri-state logic which was required in our subject patent.
Later, as we went deeper, we found more references containing complex circuit diagrams where we were able to spot the missing claim elements.
What we learned from this search was that you can find an X type references in a non-patent even without performing a non-patent search.
Only challenging projects like these are something that keeps us going.
If prior art searching would be anywhere near to something which we can call monotonous or boring, I don’t think GreyB, where people breathe creativity, would be doing it for more than a decade with enthusiasm every time higher than the last search.
If you ever come across a challenging patent, let us know. If there exists a prior art for the patent, we will find it for sure.
Relevant cases where above mentioned strategies can be applicable:
- 8-21-cv-00046 (CDCA) Core Optical Technologies, LLC v. Comcast Corporation et al
- Patent involved in case: US6782211B1
- Technology areas involved: Modulation, optical system, polarization
More relevant strategies that can be explored for such cases:
- How a Circuit We Designed Helped Solve a Prior Art Puzzle (Related to IC designs)
- How we Invalidated a Wireless Communication Patent using Standards? (Related to IEEE standards)
Authored by: Nikhil Gupta, Manager, Patent Search and Navneet Kaur, Research Analyst, Patent Search