First, the value of invalid retrieval.
Patent invalid retrieval, also known as invalid evidence retrieval, authorized patent retrieval, patent validity retrieval, patent stability retrieval, etc. For enterprise intellectual property professionals, this is a common patent retrieval activity, which refers to the act of retrieving patent or non-patent documents that can destroy the novelty and creativity of an authorized patent claim.
The development of patent invalid retrieval generally has a strong scene and purpose. Scenario refers to the patent invalid retrieval is generally used to counter the aggressive behavior of competitors (such as patent infringement prosecution) or take the initiative to attack enterprises (such as before patent market rights protection); The purpose of invalid patent retrieval is very simple, that is, trying to find evidence documents that can destroy the innovation of the target patent.
The effective use of invalid patent retrieval can bring enterprises the effect of "knowing ourselves and knowing each other, winning every battle". The so-called "confidante" means that an enterprise can understand the power and stability of its "offensive weapon" by searching the patent validity before actively defending rights, that is, before using its own patent to denounce the product infringement of market competitors, so as to help the enterprise make a decision on whether to take action to defend rights. "Knowing each other" means that an enterprise is attacked by a competitor's patent, that is, the other party accuses the enterprise of infringing one or several patents. By finding the evidence of patent invalidation accused by the other party and collecting documentary evidence that can invalidate its patent, it can help enterprises win the invalidation procedure and reverse their unfavorable situation in patent infringement disputes.
According to the statistics and estimation of the author's unit, the average consumption of invalid retrieval accounts for more than 60% of the whole invalid preparation, and its influence rate on invalid results is as high as 75%. It can be seen that the role and value of invalid retrieval work in dealing with and responding to patent disputes in enterprises is self-evident.
Second, the process of invalid retrieval
Invalid retrieval is technical scheme retrieval, and general technical scheme retrieval requires "not the most complete, but only the most accurate" for previous cases or comparison documents. However, in reality, it is often difficult to find a "most accurate" evidence document, so in practice, we usually adjust the target of invalid retrieval to find the "best" evidence combination.
At present, we often hear or see others say in a teasing tone, "Please be more sincere and less routine." The author believes that enterprises still need to follow certain routines to carry out invalid patent retrieval. The "routine" here refers to a basic process or guidance for invalid retrieval work. The following is a simple sharing of a relatively standardized process of invalid retrieval by the author unit.
(1) Confirm the latest legal status and ownership of the target patent.
This is not very helpful to the actual retrieval work, but it must be confirmed first, because it is related to the significance of the subsequent invalid retrieval and invalid work, and the reason is self-evident.
(2) Inquire about the examination history documents and references of the target patent.
The main purpose of this stage of work includes: sorting out the background documents cited by the right holder of the target patent in Wei Chu in the background technology part of the patent specification, the comparative documents cited by the examiner in the notice of examination opinions and the patent application of the right holder. During the review process and after receiving the patent authorization notice, the technical data related to the patentability of the target patent (such as the data submitted in the form of IDS in the United States), the detailed review opinions and rejection reasons of the examiner in previous review opinions notices, and the reply opinions of the obligee to previous review opinions notices, etc. The focus of the work is to obtain some evidence documents that can be used to evaluate the innovation of the target patent, as well as the description and definition of the protection scope of the target patent by the right holder and examiner.
(3) Inquire about the historical archives of patent invalidation administrative litigation of the target patent.
Although the patent invalidation administrative litigation follows the principle of "one thing is not dealt with again", it will be very helpful for A to know the history of invalidation declaration I before the target patent, especially all the evidence documents used by the plaintiff in previous lawsuits and their evidence combination methods. It's like we're standing on the shoulders of giants. We can absorb the essence of predecessors (valuable evidence documents), abandon the bad things of predecessors (useless evidence and evidence combination methods), and finally get into the unfinished business of predecessors (ineffective success).
(4) Inquire about the same family patent of the target patent and its review history, cited documents and invalid history.
When querying the patent family of the target patent, it is necessary to query its extended family, such as the INPADOC patent family used by the European Patent Office. At present, most patent retrieval databases have the function of querying patent families. When inquiring about the specific examination history, cited documents and invalid I litigation history of each patent in the same branch, the method is similar to that of inquiring about the target patent, mainly through the official search channels of patent offices or intellectual property offices in various countries, and of course, through the global patent files of the American Bureau of Experts, the European Bureau of Experts or the National Bureau of Knowledge, several major countries and regions (CN, EP, JP, KR, us, WO, CA) can be inquired. In addition, if there are PCT channels or patents of the same family in the European Patent Office, then the retrieval report issued by the PCT designated office or the European Patent Office is also one of the important reference materials we need to obtain.
(5) Search all related patents previously applied by the owner of the target patent.
Although it is unlikely that the patentee will apply for a patent repeatedly, it is understandable that most R&D and innovation are continuous, especially in the same enterprise. In practice, we finally take the patentee's own prior patent as one of the evidences, even as the main comparison document. Therefore, it is an important part of patent invalidation retrieval to retrieve the related patents previously applied by the target patent owner and explain them in detail.
(6) Search the market for all relevant patents of the main competitor of the right holder of the target patent.
The technology and products of competitors are often very similar to those of patentees. Therefore, the patent layout made by the two sides for the strategic consideration of attack, defense or reserve is likely to cross within a certain range. Therefore, from the point of view of competitors, especially old competitors, it is a relatively quick way to retrieve the comparison documents that can destroy the innovation of the target patent, and there will be unexpected gains if you wait.
(7) Analyze the claim of the target patent and extract the retrieval elements.
The above steps 2-6 are actually a convenient and quick method of obtaining evidence. If the above steps can be collected and combined into an effective invalid evidence chain, then the next retrieval work can be stopped. But the reality is often not so beautiful, even cruel. In this case, we can only start a routine invalid retrieval process. That is, after analyzing the claim of the target patent and splitting the technical features of the claim, A takes the retrieval elements. The retrieval elements here should include all the technical features in the claim as far as possible, such as the name of the part or component, parameter range, connection relationship, position relationship, technological means, etc.
(8) Express retrieval elements and construct retrieval strategies.
At this stage, the focus of the work can be placed on the production of the retrieval element table, and in the production of the retrieval element table, the most needed skill and test part is the selection and expansion of the subject words. After certain keywords are selected, they need to be developed from different angles, including but not limited to synonyms, synonyms, misspelled words (such as "bill" and "bill"), antonyms, scientific names, common names, abbreviations, superordinate words and hyponyms. In addition, we need to make more efforts on how to obtain the above extended words. Baidu, Google, Wikipedia, professional websites or forums, libraries, scientific papers databases, patent databases, etc. All of them are available channels, especially it is a more effective method to obtain approximate keywords through a patent database that has been preliminarily tested.
In terms of constructing retrieval strategies, according to the experience of the author's unit, the more effective retrieval strategy is T-block retrieval, which includes the following five retrieval types: retrieval types constructed only by keywords, retrieval types constructed only by accurate classification numbers, retrieval types constructed by keywords with classification numbers, retrieval types constructed only by patentees and retrieval types constructed only by patentees with keywords or classification numbers.
(9) Select the appropriate patent teaching database and search it.
This stage is easy to understand. Different databases will have great differences in the integrity of patent data shell, especially some foreign patent data. Therefore, the choice of patent database will directly affect the hit rate of retrieval results, and may eventually affect the acquisition of some key evidence. In some practical cases, many key evidence documents are authorized patents of some "non-mainstream countries".
(10) Filter the search results and combine the evidence.
This is the last stage of invalid retrieval, and it is also an empirical work, especially how to effectively combine some selected comparative documents into a set of evidence chains. In the face of several or dozens of comparative documents with high correlation with the target patent, different people will have different evidence selection and combination methods, and different combination methods will often produce different effects. Therefore, when the intellectual property workers in enterprises are not old drivers in this field, it is suggested to try several different combinations as far as possible and evaluate the effects achieved by different combinations.
Third, the skills of invalid retrieval
The second part of the above content mainly shares some invalid retrieval routines, but sometimes it is not enough to have routines, but you need some tricks, tools or just a little luck.
It is mentioned in this paper that data will have a great influence on the results of invalid retrieval, so after the retrieval in China and several mainstream countries and regions is fruitless, we must find ways to obtain relevant prior technical documents in some small countries and languages. At this time, there are two mountains in front of us: "incomplete data" and "language barrier". It is a good choice to cooperate with local firms, which can greatly improve the efficiency and hit rate of retrieval.
If the retrieval tool is one inch, it will also have unexpected effects on invalid retrieval. For example, the I-Means retrieval function, represented by patents, can break through the limitation of keywords, not only broaden the retrieval scope and improve the retrieval efficiency, but also intelligently sort patents according to the degree of correlation between patents, which is convenient for searchers to browse and screen out the closest comparative literature. Another example is the circular retrieval function represented by Patsnap, which breaks the limitation of searching only in text form and opens up a brand-new road in the field of patent retrieval, which can significantly improve the retrieval efficiency and hit rate of design patents.
In addition, enterprise intellectual property workers or patent searchers should often consult and communicate with enterprise R&D personnel, especially senior R&D engineers in the industry. R&D personnel play an important role in invalid retrieval. With their profound technical background, they can help enterprises IPR find existing technical evidence or common sense evidence of some key technical features.