PRIOR ART
the date of publication, since ‘date of publication’ is typically seen as being available to the public and possibly even in an index.
Of course, run a citation search on the authors to see if there are any other papers that may refute or even add to the technology. Indeed, consider the entire conference at which a target paper was presented as there may be other papers that are spot on, but their titles and abstracts may be elusive in a normal text search.
Tis conference paper reads very close to the patent by the same author, though a more thorough examination of what was detailed in the paper would need to be made to determine if an enabling disclosure of the same technology was made and if this material was not referenced in the patent filing.
Note, however, that outside the US, the critical date for prior art starts the day before the priority date, so do not discard those other references as they may come in handy for non-US litigation. If you find a conference paper that is on target but the date is not before the critical date, do an author search on all of the authors to see if any of them presented the same paper more than once. Typically, they will change the title slightly as sometimes one paper updates an earlier one.
If there are any other names listed as presenters on a conference paper, consider running searches on their names to see if they filed any patents, gave any other talks, published a paper, gave an interview to a news outlet or were cited elsewhere. Run these names in a business database to see if any have formed companies or are listed as directors or board members of any entities. Ten, use the names of the companies involved to determine any patents assigned to these companies. Quite oſten, patents are kept in the name of the inventors and even though these individuals form companies, they will oſten assign the rights to the new entity, so an assignee search by company is prudent to determine who owns what. Finally, consider any of these individual names for expert witness purposes.
Tis is why companies want their attorneys to approve any conference presentations.
Ron Kaminecki is director of the intellectual property segment at Dialog LLC. He can be contacted at:
ron.kaminecki@dialog.com
Ron Kaminecki has been involved with patents for over 35 years, starting as a patent searcher and currently working with other patent attorneys and agents, plus patent examiners in the art of literature retrieval for intellectual property. He holds a BS (chemistry); an MS (computer science); a JD (with certificate in patent law), and is a US patent attorney and has a patent pending.
www.worldipreview.com
World Intellectual Property Review March/April 2011
39
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