1 February 2011PatentsRon Kaminecki

Prior citings

Prior art, for the purposes of searching for non-patent literature, can be defined as any publication or even sale of goods prior to a critical date involved with an application for a patent. This critical date can be one year before application for a US patent or one day prior to application to other patent authorities. Many practitioners dutifully search the patent literature to find prior art because it is easily accessible, relatively inexpensive, fairly extensive and provides easily identifiable dates.

Patent applicants will focus on researching published patent applications and granted patents for prior art, but they should not forget to search non-patent literature (NPL), which may provide compelling evidence in patent prosecution or even litigation. Any relevant prior art found may be helpful to the applicant in drawing up realistic claims for an invention and could also obviate a rejection by an examiner.

Dissertations as prior art

Outside of patents, a great source of bibliographic citations is dissertations. They typically contain references to relevant publications based upon research in the subject area of the work, but tend to be plagued by improper or poor citing. Patent offices tend to standardise patent numbers in the cited patents area, but they do little to patrol the non-patent literature reference.

And dissertations typically have very extensive bibliographies, which can be used as prior art, as these citations deal with the subject matter and they predate the dissertation. Not only are dissertations useful in themselves, but they can be even more interesting as a link to more extensive, and earlier, links. This can be important when seeking to invalidate a patent.

Conducting a search of dissertations will involve extensive keyword searching as these documents are typically indexed only briefly by discipline. But it is usually an easy matter to look up a dissertation by the author and then compare the author’s name to any patent applications. If nothing is found, the institution that granted the degree can be checked to see if there are any other individuals who may have done similar research.

“a great source of bibliographic citations is dissertations. They typically contain references to relevant publications based upon research in the subject area of the work, but tend to be plagued by improper or poor citing. Patent offices tend to standardise patent numbers in the cited patents area, but they do little to patrol the non-patent literature reference.”

Universities tend to specialise in publishing specific areas of research, as departments with professors pursuing a topic will build up expertise, recruit researchers and invest in equipment to attract more research to the university. For example, a school that has a cyclotron will tend to attract researchers who wish to work in that field and the school will not only hire professors with a background in this area, but also graduate researchers who will use this equipment. Universities as centres of interest can be valuable not only for prior art purposes, but also for locating experts and expert witnesses should the need arise.

In one case, we found a person who had published a doctoral dissertation in the area of nitride thin films in 1990 and applied for a patent entitled ‘Seeded growth process for preparing aluminum nitride single crystals’ with a claimed priority of 2005, about 15 years afterwards. Of course, you cannot assume that two apparently related publications will actually cover the same matter without further investigation, but for prior art searching purposes, these documents were definitely on the reading schedule.

The full text of the patent identified many cited references to non-patent literature, and while these references may have been unlikely to be suitable for use against this patent, they would be extremely useful as prior art to other patents that cite this one in the future.

One method of checking is to look at the cited references in the patent to see if the inventor cited his own dissertation. This patent cited several references much newer than the date of the dissertation, which might lead you to believe that perhaps the two do not have much in common, but this could still be a matter for further investigation. If, for example, you did find several citations dated around the same date as the dissertation, then an in-depth look at the thesis would be warranted.

Because both patents and dissertations are rich sources of bibliographic data, a comparison of the citations found in the dissertation with the patent could show any overlay of the same citations, which would lend credence to the two or more documents disclosing similar materials. Because many researchers obtain doctorates and then go on to file patents in the same area, searching dissertations can be a rich source of nonpatent literature for prior art purposes and can also be compelling evidence in litigation.

Conversely, dissertations can also be used to identify experts or expert witnesses, in addition to centres of research in an area relevant to a patent application.

Ron Kaminecki is director of the intellectual property segment at Dialog LLC. He can be contacted at: ron.kaminecki@dialog.com

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