On Finding Patents
Some Thoughts on Patent Classification
In December 2012 the Federal Trade Commission and Department of Justice held a thoughtful workshop focused on patent assertion entities, patent trolls, and their impact on the marketplace. The meeting included a who's who of the Patent Bar and luminaries from across the patentsphere — Carl Shapiro from UC Berkeley, the ubiquitous Colleen Chien roadshow, and representatives from Intellectual Ventures, Nokia, Rackspace and others with patent dependent or patent monetization business models. The workshop made it apparent that the issues are complex and the answers are not obvious.
Most of the speakers and panelists were lawyers. One of the few business people at the meeting was Brad Burnham, a managing partner at Union Square Ventures, a firm involved in financing many notable companies like Etsy, Boxee, Meetup, Kickstarter, Tumblr, and Twitter. Mr. Burnham talked about his own unpleasant experience with patent assertion entities and the experience of having a previously unfindable patent asserted against one of his companies. He made the most insightful statement of the day,
Mr. Burnham isn't alone, most business people can't find patents. It is tedious, requires lots of arcane knowledge on the meaning of the collection of data on the front page, and frankly, even the most basic information is not obvious. But finding patents is important. And a critical element in finding a patent is understanding patent classification.
You can't find patents.
A patent's classification is USPTO's imprimatur on the scientific or technical content of an invention. Patent classification is important if you want to find patents. The patent classification is used by patent examiners around the world to see if the new invention in a patent application is actually new or worthy of a monopoly for the 20 years. The classifications indicate to a new patent examiner what another examiner thought about the invention and what its most important inventive aspects are. The list of classifications that make up the field of search information on the first page of a patent, tell the rest of us where the examiner looked before determining that there was no prior art to prevent issuing a new patent. USPTO touts that patents are the largest and most comprehensive collection of systematically cataloged scientific and technical material in the world. And classification is how patented inventions are systematically cataloged. A classification from USPTO says, "this is what this invention is and these are the patents that are closest to it."
A major shift in the way patents are classified is underway at USPTO. This initiative is changing the way patent classifications are assigned and, in turn, the way the inventions are organized. Switching from the current US Patent Classification system to the new Cooperative Patent Classification system needs to add value to the process for the examiners, for the inventors, and the people who seek to make products and to monetize patents. And make patents easier to find.
The USPTO Director's Forum blog post, "Global Classification and the USPTO," discussing the pending shift from US Patent Classification System (USPC) to the new Cooperative Patent Classification System (CPC) reinforced the importance and the significance of that patent classification,
Placing a classification symbol on an application means an examiner has determined the proper technical field to place the invention.
...Over 8 million U.S. patent documents already containing CPC symbols, patent applicants and owners may be wondering what immediate impact CPC will have on patent searches and classification. It will mean a more comprehensive search of prior art.
Claims, Classifications, and Routing
The change from the USPC system to the CPC changes the fundamental way of thinking about the inventive aspects of a patent. The CPC is a new system based on the International Patent Classification System (IPC) developed and managed jointly by the USPTO and the European Patent Office (EPO). Under the current USPC system, patents are classified based on the claims. Under the CPC, patents are classified based on the entire invention (patent disclosure) in light of the claims. This is a major change especially for US inventors and patent professionals who think in claims. When reading a patent it is understood that what is owned is the invention described by the claims and that the specification, the drawings, and the abstract are there to help you understand the what is covered by the claims. A patent infringement lawsuit doesn't say you are infringing a patent, it says you are infringing claim 5 of a patent. When you think about patents you need to think in claims.
More Granular & More Expansive
- The CPC is more granular in terms of choices. The assignment of classification symbols is more expansive meaning there will be more classifications on patents.
- The shift to the CPC changes the classification symbols assigned to a patent. The new system uses an alphanumeric symbols in a new hierarchy. The CPC changes the available number of actual symbols to select from when making classification decisions. This means that external users (the people who craft the patent applications) and patent examiners need to learn the new system.
- The CPC changes the number of classifications needed to describe all of the content in a patent or patent application. The CPC has approximately 260,000 unique classifications compared to about 150,000. More classes means a more refined collection of individual patents assigned to a particular classification.
Review of a portfolio of recent patents with CPC classifications showed that there is a very large increase in the number of CPC classifications applied to these patents. Another recent patent. US Patent 8,092,753, has 8 USPC classifications, 12 IPC classifications, and 35 CPC classifications. This in turn means there are many more patents to look at to ensure you have done a comprehensive review of all of the patents covering the subject matter. At present, it is unclear how this increased number of classifications will impact examiner workload when assigning classifications and when doing searches.
The Primary Classification (or First in CPC lexicon), is used to determine which group of patent examiners will receive the patent application. The shift from a claim focused approach to a claims in light of the full invention approach may change where some patents wind up among the various art units at USPTO. For now USPTO continues to use the current USPC based system for assignment of patent applications. When the transition to the CPC is complete in 2015, the classifications used for routing will change as well.
It is unclear how any of this will help improve the ability find patents or if it will help Mr. Burnham and other innovators find patents. But the train has left the station. In her blog post the Acting Director noted,
CPC is the future of classification for the USPTO and the EPO. Together, we are engaging other IP offices to expand the usage of CPC and explore future enhancements to the CPC system. By joining together and sharing resources with the EPO, CPC will provide far-reaching benefits to our employees, stakeholders, and the international patent classification community.
Let's hope that one of those far reaching benefits is making patents easier to find.