Contentious Patents: Issues and Search Techniques with High-Tech, High-Concept Patenting

Article excerpt

As part of the process of establishing the patentability of a new invention, searchers must research the "prior art" for disclosures of existing high-technology innovations. This article will focus on "inventions" in the special areas of computer software, Internet technologies and e-commerce, and business processes.

The intellectual property system, in particular copyright and patents, was conceived and subsequently evolved to encourage technological innovation and thus to contribute to human 'knowledge' across the range of human experience. The underlying principle of the system of intellectual property is for a chosen nation state or supranational organization to provide legal protection through a guarantee to the innovator of an original idea, whether artistic or technological, to the rights to exploit the potential of that idea in return for a detailed disclosure of the nature of an inventive or creative work.

This formal relationship between creator and guarantor is designed to provide an environment that will stimulate innovation and creativity still further and thus extend the limits of human knowledge and creative expression. The fundamental principle of the system is therefore, quite simply, that the disclosure of an "inventive step" contributes to the human "knowledge base." This enables the often small, sometimes large, advances in learning that consequently help to shape and to develop our social and technological environment. The process, in our minds, fundamentally defines the direction of human achievement and even evolution.

As part of the intellectual property system, especially with regards to patent disclosures, inventors are expected to consult the "state-of-the-art" with reference to published patent specifications and to find improvements to existing methods and new techniques that build on existing knowledge. So each patent applicant must provide a "full and detailed disclosure, such that anyone trained in the art is able to reproduce the invention."

The Importance of First Disclosure

Since a patent must be the first disclosure of an invention, much of the information published in patents is never reproduced again or elsewhere. This makes the global patent archive a unique and highly valuable source, not only of state-of-the-art information, but also of prior art or knowledge about a particular subject area. The basic premise of the patent system, therefore, certainly as far as the guarantor is concerned, is to encourage innovation and consequently enable improvements of the existing human "knowledge" pool. In these days of the all-powerful, multi-national and the commercialization of every conceivable type of product and service, coupled with the omnipresence of an increasingly competitive global economy, we sometimes seem to lose sight of this simple, idealistic principle.

Given that organizations operate in markets of ever-increasing competition and complexity, speed of bringing product to market has become essential. Traditionally, patents are published up to 18 months after their original filing with the chosen patent authority. With the increase in the speed of product development times inevitable as competition drives innovation, we now see patents published much closer to the time that a product actually launches onto the market.

However, the patent must always be the first disclosure of an invention, even if the patented technology subsequently appears on the market as a product. Hence, this trend, particularly within the engineering sector, suggests that patents are increasingly being used as part of the product development process and are being written and filed in parallel with the development of technologies and products. If this trend of rapid development cycles continues, organizations will need to ensure that the product itself does not become the first disclosure of a particular work!

So what is the line of demarcation between public-domain knowledge and protected information? …