Exclusive Interview with Sam Zellner | Inventor Spotlight

Exclusive Interview with Sam Zellner

Sam Zellner is a Prolific Inventor, an Entrepreneur, Adept Portfolio Manager, Product Lead for PQAI and Ex Director Innovation at At&T.

Mr A: Core innovation happens when we stop believing in the societal norms of accepting ‘that’s how it works’

Sam Zellner: “The corollary to this is believing long held assumptions can’t change. Ken Olsen, CEO of Digital Equipment Corporation (DEC) said in 1977, ‘there is no reason anyone would want a computer in their home’. The challenge for all of us is realizing when a basic assumption is no longer true. The funny thing is it’s always obvious later on!”.

Introduction

Samuel N Zellner is a prolific American inventor with more than 200 issued and pending patents worldwide. He has held many prestigious positions in the IP fraternity. Sam Zellner retired as Executive Director, Innovation at AT&T in January, 2010. During his tenure at AT&T he created state of the art platforms utilizing Artificial Intelligence (AI). He also developed new approaches in advanced big data concepts to develop high-value patent portfolios and monetize these Intellectual Property (IP) assets. 

His current projects involve creating an open source combinational prior art search engine utilizing AI called PQAI, which stands for Patent Quality through Artificial Intelligence. Sam Zellner is also working on InspireIP, an invention disclosure system making invention management easy for inventors and IP counsels.

Sam Zellner is a board member on a number of the state IP Alliances as well as the newly formed  US Intellectual Property Alliance.  He has also been recognised as IAM 300 Top Strategist 2019. He is experienced in planning and strategizing in high tech. Sam is also on the board of directors of the Licensing Executive Society (LES), Atlanta chapter since January, 2018. 

Exclusive Interview With Sam Zellner

We asked some questions from Sam Zellner and through his experience, he has provided some brilliant insights for the inventors and patent portfolio managers.

#1. What challenges do you face in your daily life as an inventor?

My big joke is that the inventors are some of the loneliest people as they are not able to find support for their ideas. As an inventor, you come up with an idea and if you present your idea to someone, they tend to discount it as being bizarre or incorrect.  

For example, way back when the inventors were thinking about putting cameras on cell phones, everybody was like why would we put cameras on cell phones? data transmission is  expensive, cell phones cannot hold much data and At the time it seemed like a crazy idea.It is hard as an inventor to share  ideas with other people, as inventors typically base their inventions on assumption sets different from the accepted norms. Battery technology will improve (think electric cars), people will change their behavior (think buying online), laws will change (think Uber and taxi licenses).  This is why most people can’t see or accept inventors’ visions.  Later on, when hopefully the idea is adopted, everyone’s lense looks at the concept with the new assumption set will say that either ‘I was also thinking of this idea back then’ or that ‘it was obvious’. It is really hard as an inventor to get credit. With the patent system, the inventor gets some credit as they are recognised with the patent. 

Generally, it’s sort of a lonely life as an inventor, a tough life because very rarely do people acknowledge that you had a good idea. Rarely do you get recognised as doing something novel, rather you are recognised as crazy, which is the common thought process.

#2. Are you part of any inventor groups or community?

I am not aware of a lot of communities. Maybe, the individual inventors are a part of some communities. My experience with corporate inventors is that they tend to talk to their associates, but I am not familiar with the corporate inventors being part of a specific group. You might check with the inventors’ association to see if there are any particular groups that they are pushing towards. I think in Atlanta there are some incubators that have events, which are fairly popular. Tech Village in Atlanta is one.

#3. What motivates you to invent?

As a lot of people say, engineers like solving problems, I think it’s a mixture of curiosity and wanting to solve problems. Patents are about solving problems, so it comes naturally that way. I look at problems and try to think of how to solve them.

#4. When do the best ideas occur to you?

I think most people say that when you are in the shower. On the contrary, I think typically, like I said it’s about solving problems, so the best ideas come a few hours after you see a problem or run into a problem. As they say, your mind is thinking about a problem and to invent, sometimes you really need, almost, the subconscious to be helping you. Because unfortunately, the assumptions that most of us go around with are so strong that it’s really hard to see past those assumptions. Particularly, what are called the ‘old assumptions’ – assumptions that might have been good a year ago but now because of new technologies, change in economic factors or regulatory landscape or something in the environment. Now the old assumption that – ‘we can’t do this’, is probably no longer valid. Then all of a sudden, when you think of assumptions as walls and when you move that wall away, then a whole gamut of opportunities open up. 

It reminds me of location services, I did a lot of patents around location services. Before, we had no real in-location services capability, GPS came and then we had the enhancements with cellular, allowing us to do location for 911. The general thinking of the people was that ‘I don’t know where somebody is when they call, when they are using a phone’, now all of a sudden, anybody can know exactly where the other person is. As an inventor, now you wonder as to what you can do with that. What came to my mind, at the time when it started off, was that the cellular network moves when I leave the house. The cellular network knows when I leave the house, it can see me driving my car, location is changing, then it should know how to change the thermostat in my house. So it’s more efficient, I am saving energy because it used to always bother me that when I leave the house, since in Atlanta it’s very hot, the air conditioning is always on and wasting power that way. So it could let the house get a little warmer when I am not there, there’s no harm and I am saving money, energy. And ideally the cellular network could see when I am coming back again so it could turn the air conditioning on and when I get home, the house would be cool again. So it’s a simple example, once it’s realised that location can be used to control things, now it opens up all kinds of opportunities.

Another thought was now that the cellular network can see me arriving in a city, if there’s a hotel in that city, it can automatically register me for the hotel because it can see that I am coming for my hotel room. So it’s amazing, once I start realising and accepting the fact that I can know where people are, now I can make some assumptions about what should be done based on where I am. So that’s what I mean about the whole idea of changing assumptions and opening up more opportunities.

#5. Is there a systematic approach to coming up with innovations? 

There are a lot of techniques out there, it depends on the person what technique works well. Everybody is different in how they think so it can be different. There are really two parts to this, one there’s getting the seed idea, identifying the problem and on the cusp of solving the problem and then there’s also sort of extending it. So the hard part is getting the seed idea and finding a problem that’s of significance, which hasn’t been solved well. For me, I go through the assumptions that I am making about the problem and test each one to see if it’s true. If I take this assumption, what it does. And that for me helps quite a bit. 

The other piece, which I see a lot of people do and is easy to do, is that as in my example before, about location services and changing the thermostat, people tend to get fixated on one solution to a problem. They don’t really generalise it because again, think about it, the patent is looking into the future. As an inventor you are trying to throw a solution out into the future and it’s very hard to know how the world will change in the future. Therefore, you want to expand your idea plus you don’t know what people have really done. 

That’s one of the reasons why PQAI is so helpful. When you run PQAI, you can see where the thinking is and you can modify your idea based on that. As an inventor, you might find out that people have already thought about your idea, so you might want to think about the next generation of the idea. Maybe there are some aspects of using location to control something, what would come next and where else might you apply, if it’s just thermostats. What about using location to provide package delivery notifications and you know there’s lots of other things there.

When you get a seed idea for an invention, try to generalise it. I think about it as trying to generalise it till all of sudden it’s no longer novel, it gets so broad that you’ll run into the wall that says, it sounds familiar or that’s already been done. In any case it helps you, particularly in the patent because as you know, with a patent you have your initial claim and then you have your dependent claims. Thus, it expands your idea and this way if you do a mapping, like again in the example of location services and controlling the thermostat, you might generalise it from controlling a thermostat to controlling a device and you might define control as turning on and off instead you might want to define control as adjusting or you can say controlling multiple devices. So that helps to broaden out your idea in case some prior art is already there, you can find your segment.

#6. What was your first invention and when?

First invention… I didn’t go anywhere with that but I tried. I had two ideas, one idea was in 1983, creating a phone ringer that would play tunes. My interest was particularly in the fight songs in colleges I attended school at Northwestern University. They have a big marching band and they have their own fight song like most universities do. And I thought that wow all the alumni would love to have their phones ring their school’s fight song. So that was my idea and this is prior to cell phones, so this is at the time of landline phones. At the time, the landline phones did not have any tunes playing, they were basically just a standard ringer. So I was trying to put together the electronics around it and unfortunately, I could not quite get it together. 

The other idea, which sounded crazy back then, was putting TVs in an elevator. I used to work in a high rise building back then. I just noticed how much time people spend in the elevator and how uncomfortable people were in the elevator. Then, I thought to myself, wow, if you could put a TV in there and show some news or something, that would be actually welcome, since people are looking around uncomfortably in the elevator. I actually talked to the city of Chicago elevator commission about putting TVs in the elevators and they thought I was crazy.  Now the ironic thing is, I haven’t seen that many but there are a few TVs in the elevators but you see TVs in public places. It is one of the examples where I should have been thinking broadly because now you see TVs at the airport, gas stations, pumps, and in a lot of different places. It goes back to thinking broadly because sometimes your initial use case is not the most important use case.

#7. What shall be your advice for budding inventors?

Run your idea through PQAI and gather some knowledge about how other inventors have tried to solve the problem. Keep an open mind. Don’t get totally stuck on your one use case. Listen to people, share your idea, obviously in a way that it is protected but maybe after your provisional application or with your close friends to try and get a sense of how people are reacting to your idea. A lot of times it will give you clues as to maybe where you are a little off in your idea. It’s very rare, in my experience, that people have hit it right in their initial idea. They are in the right area, they have the right basic building blocks but it needs to be adjusted in some way. My advice is be open and listen carefully to people’s reactions as it might give you clues for where you should be going.

The other thing is that inventing is very hard. Don’t be discouraged if your first idea might not be novel. It is very hard, you are competing against all the inventors in the world. That’s very tough so don’t get discouraged.

#8. How was your experience as an inventor at AT&T?

My experience at AT&T was very good. AT&T has a very energetic, creative environment and very smart people. We could talk about the new ideas and people were very open to it. We were working with a lot of cutting edge technologies at AT&T. So I found it very easy to come up with new ideas in that environment.

#9. What are some tips you would like to give to a patent portfolio manager?

Again, to have an effective patent one really needs to be broad. So I would want to encourage the patent portfolio managers to make sure the patent is broad enough so that as the future unfolds, the patent is still relevant. I think what helps to broaden your patent out and obviously, to test it is to do some prior art searching. The prior art searching really gives you a sense of how other people are thinking about the idea. Then you can see how your idea relates to those thoughts, that usually generates more use cases and more thoughts about how to broaden out the patent and where novelty really exists. 

I would encourage the patent portfolio managers to do some prior art searching and that’s where PQAI provides great opportunity as prior art search takes a lot of time. With PQAI you can do it very quickly. It is sort of a golden opportunity for patent portfolio managers to leverage it and ensure that either the ideas/inventions are new disclosures or continuations or their very best.

Sam Zellner | Patent Portfolio

The statistics and charts hereunder provide an insight into Sam’s patent portfolio, which has more than 200 issued and pending patents worldwide. 

Note – Patent families represent the count of total unique patent families. Patents represent the total number of records i.e. considering all the family members of an INPADOC (International Patent Documentation) family. The following four statistics are based on unique families count.

  • Technology Area And Patent Families Count –

Sam’s patent portfolio has 292 patents globally, which belong to 91 unique patent families. He has worked in many areas of the tech industry but mainly, most of his inventions are related to electronic communication techniques and instruments. The count of inventions in this and related domains is 86.

The chart below details the areas of technology in which his patents have been filed:

Sam Zellner Patent Portfolio
  • Technology Through The Years – 

This statistic is based on Sam Zellner’s patent filings periodically, indicating as to how many patents are filed year by year and in which area of technology:

Sam Zellner Patent Portfolio
  • Inventions – 

Sam Zellner has patents in 91 different patent families within his patent portfolio. He is an individual inventor of 17 and a co-inventor of the rest of the 74 core patents:

Sam Zellner Patent Portfolio
  • Patent Assignment 

Sam Zellner is affiliated with AT&T Inc, putting AT&T on the top of the list of patent assignments by Sam for his inventions. However, there are a few more names of other assignees in the list, in the cases where Sam’s inventions have been re-assigned by AT&T and all these patents were filed by AT&T. All the subdivisions of AT&T as AT&T Inc have been considered.

Sam Zellner Patent Portfolio

The term “Patent Counts” represents the counts of individual patents filed in various countries, irrespective of the patent family. The following statistic is based on the total number of patents in the portfolio: 

  • Patent Filing Worldwide

The following graph shows Sam Zellner’s patent filing for inventions worldwide. Majority of the patents have been filed in the United States of America. Also, there are 10 patents, in which the applications have been filed before the World Intellectual Property Organization (WIPO) & the European Patent Office (EPO).

Sam Zellner Patent Portfolio

The Key Takeaways

Sam Zellner has decades of experience as an inventor and a patent portfolio manager. Sam’s advice to the inventors is to think broadly and expand the idea beyond your first use case. Sam Zellner recommends the inventors to keep an open mind and observe how the people are reacting to the idea, when shared with people in a protected way and also motivates them to not get discouraged in case their idea is not novel. He encourages the patent portfolio managers as well as the inventors to do some prior art searching, to find how other inventors are approaching the same problem.

What top publications have to say about Biden’s IP Roadmap?

Biden's IP Roadmap

The world is anxiously waiting for revolutionary change as Joe Biden, the 46th President of the United States and Vice President Kamala Harris prepare to make history. Topics of interest focus on how the Biden-Harris administration will deal with the impacts and consequences of the nation’s intellectual property (IP) law and policies.  

This article provides some insight as publications post comments and concerns about Biden’s IP policy approach. They each share perceptions that speak to the need to fortify U.S. IP protection as an incentive to continue developing inventions, technology innovations, and research patents to retain America’s lead in advancements.

U.S. businesses and inventors are concerned about how IP laws and policies could influence opportunities for supplying goods and services to support continued growth in commerce within the public and private market sectors. Looking in from the outside, President Biden’s plan needs to facilitate a more efficient patent filing process that secures and protects IP transfer and trading practices within domestic and international markets.

Overall, the community’s consensus sees the next four years highlighting the Biden-Harris administration’s effort to improve U.S. IP policies at home and abroad contributing to America’s economic recovery.

Challenges for the U.S. How Will Harris Influence IP Law in the Biden Administration? – The Diplomat

The Diplomat – Contributing author Robert Farley commented on the influence that Vice President Kamala Harris brings to the table. Securing her position in U.S. history as Vice President, the post goes on to state how “Harris would influence both the executive branch policy and legislation while presiding over a closely divided Senate.”

As a sponsor of the DEFEND ACT during her tenure as Attorney General of California, Harris legally pursued producers in India and China for IP violations based on fair-trade and law-abiding principles. In her current position as U.S. Vice President, there is no doubt that her influence will carry both inspiration and encouragement for patents filed in the United States.  

The certainty of the Biden-Harris administration’s views on IP law and policies will focus on leveling the playing field for American enterprises and research organizations looking to gain a fair share to the supply markets.

Ruling on Technological Policies Gina Raimondo pledges tough line on China – The Washington Post

Washington Post – Covering world business Jeanne Whalen reported on the Commerce Department nominee Gina Raimondo, pledging to join the fight against unfair trade practices. Raimondo did not share any details on how she planned to proceed – instead, Rhode Island’s Governor made this statement, “I believe America has to lead in standards-setting, particularly in new technology.” Raimondo continued saying, “It’s one way we could help Americans to compete, lead and win.”

China is the target in this article, charged with intellectual theft and misuse of patents with the intent to use stolen technology as a source to spy on other nations.  Historically, the United States has held the number one position globally for filing the most international patents comprised of technological advancements, making it a primary targeted. 

China misjudged the strength and resilience of the United States as a global competitor in trade as U.S. enterprises continue to develop technology and venture into new research discovery.

Foreign Competitor Enforcement Biden’s Commerce Pick Vows to Combat China and Climate Change – The New York Times (nytimes.com)

New York Times – Ana Swanson covers trade and international economics, reported on Rohde Island’s Governor, Gina Raimondo’s discussions on the Department of Commerce’s “Entity List” prohibiting companies from selling American products and technology to individual foreign firms without a license. 

The Department of Commerce added the names of IP violators to the Entity List to protect America’s technology and business invention patents allowing organizations to pursue open and fair markets actively. The Department pledged to continue its enforcement of foreign attempts of intellectual property theft and inappropriate (unlawful) acquisitions of patented data.

The article cites Raimondo’s praise by her peers for her public and private interest, dedicated to dealing with the pandemic, increase investments in U.S. businesses and promote marine and space economies.

Raimondo’s comments and the Department of Commerce’s actions to protect American intellectual property encourages new inventions and continued research advancements in an effort to drive the U.S. economy forward.

US Patent System Innovation Alliance Urges Biden Administration to Support Patent Rights (ipwatchdog.com)

IPWatchdog – The article mentions the disarray in the U.S. patent process. Brian Pomper, Executive Director of the Innovation Alliance, sent a letter to President-elect Biden and Vice President-elect Harris outlining the need to support patent rights to meet enforcement challenges brought on by foreign competitors. 

Similar upsets of the U.S. patent process were mentioned in President Biden’s Plan for Rural America, declaring a recommended change on how patents are awarded. One area pertaining to research, President Biden proposed that agricultural patents granted to private entities for inventions derived from publicly funded research deprive the public of duly earned benefits. 

To protect the American people, “Biden encourages the U.S. to “re-invest in land grant universities’ agricultural research so the public, not private companies would hold title to agricultural research patents.”

Beyond US Borders  Biden must do better than Trump’s tariffs in challenging China on intellectual property | The Hill 

The Hill – Marc L. Busch, Karl F. Landegger Professor of International Business Diplomacy at the Walsh School of Foreign Service, Georgetown University, addressed two IP concerns associated with the forced-technology transfer through joint-venture and government subsidies funding research and development. 

China was accused of forcing businesses to hand over their intellectual property to access their market. China then claimed the technology benefiting from the production and sale. Developing a legal partnership is a business strategy that allows the patent holder to sell or license the intellectual property rights to an authorized party for a specified duration and receipt of payment, royalties, or fees. 

Busch suggested it may be a viable solution for new or existing patent holders to participate in secondary market spillovers as the concept offers economic benefits while spearheading new market patent developments.  

Trade Secrets at Home Biden Plans to Ban Noncompete, No-Poaching Clauses (shrm.org)

SHRM – Society of Human Resource Management responded to an issue closer to home for U.S. employers and its workforce. President Biden’s platform included eliminating or at least minimizing employee non-compete clauses and no-poaching agreements. 

Biden, “specifically, said he would support federal legislation to eliminate most non-compete agreements – allowing only those that are necessary to protect a narrowly defined category of trade secrets.”

Employer IP practices came into play as standard employment clauses and agreements to legally deter employees from sharing company information or competitors from soliciting employees to obtain trade secrets or data. Over time, employment IP protection took on a broader role that interfered with workers’ rights to seek other employment in similar industries.

Employers could secure and protect patented investments by detailing the IP clauses and agreements to guard new technology, confidential information, trade secrets, inventions, or brand data.

In summary, President Biden made two key points in his “Made in America” program; to provide incentives and support companies sourcing and manufacturing products within the United States and to protect U.S. patent rights by challenging attempts to steal American intellectual property.

Do Prior Art Search Yourself With PQAI!

Prior Art Search Made Easy With PQAI

Artificial Intelligence is changing the world around you. From suggesting videos you may like, to driving cars for you. But can AI accompany you on your prior art search spree? Let’s find out.

To Pursue or Not to Pursue? – That is the question

If you are one of the inventive types, you must be having a lot of ideas as you go about your day, as if problems are just kind of waiting for you to arrive and provide a solution. You also know the power and perils of ideas. Pursue the right one and you can make a fortune, pursue a wrong one and it can lead to wasted effort.

So it is important that you pursue the ideas that are most likely to give you high returns. But how do you know in advance?

Well, there is no simple answer to this question but few loose rules of thumbs. One is that it is better to pursue ideas that are actually new and never thought of before. This is important because if you market your idea, you can also get a patent for it. If your idea is not new you won’t be able to have exclusive access to it and you may not even be able to market it.

Many inventors don’t pay sufficient attention to it. Or they assume that if an idea has not been turned into a product then they have no risk in bringing it to market. It couldn’t be farther from the truth. In fact, only a small fraction of the actual ideas that have been patented are realized in the products. Therefore, it is important to run a prior art check before you begin to pursue any idea and be sure that you would be able to patent, and thus, have exclusive rights to market it.

The Prior Art Search | Challenges

There are plenty of free resources available for you to use to run a prior art search. These give you access to thousands of patents. But navigating through that heap of documents is a task of days. Not just that, these search engines require you to create sophisticated search strings. Here is how a sophisticated boolean search string looks like:

The state-of-art patent search tools cater to those who know what to look for and how and where to look for them. But you are an inventor who might not really have a legal background. Don’t worry though, there is a prior art search engine that understands natural language and is super easy to navigate through search results. It’s PQAIPatent Quality Through Artificial Intelligence. When AI can drive cars it can surely make prior art search less complex.

PQAI – An AI Powered Prior Art Search Tool

When using PQAI, you don’t have to worry about keywords and search strings. You also don’t have to worry about using operators to sieve your results. PQAI also helps you locate prior art without a classification search. Enter your idea into PQAI in plain English. And PQAI shall present to you only the top 10 results closest to your invention. The best part is, each result shows the relevant texts from within the document matching your query. This saves you from reading the patent documents or research papers in full detail.

It’s So Easy You Can Do It Yourself

Let’s assume that your idea is to create a light-weight, portable bluetooth speaker with an in-built light that glows like a real flame together with your music.

Prior Art Search | Bluetooth Speaker shaped like a lantern

Before investing time and resources into this venture let’s check for related prior art using PQAI. Go to projectpq.ai and enter the description of this invention in plain English. We did it for you as shown below.

When we ran this query through PQAI the AI algorithm curated the top ten most relevant representative results. And at the 7th position we found a patent that was pretty close to the invention in question. It’s titled – “Portable Bluetooth Camping Light”. Presented below is the snapshot of the result. It also contains a table showing query element mapping with the relevant text from the patent document.

Here are a few drawings from the above mentioned patent document that match with our invention query.

Looking at the prior art shown by PQAI. The invention seems to be already patented by someone else. This means it might not be very wise to pursue the idea any further.

It’s time for you to look for prior art matching your invention for real. Based on the results you receive you can choose to modify your query. You can also save the results you like to view later.  We are sure that you would be surprised to see the insightful results matching your invention.

You can further modify the results by adding filters. You can filter the results based on publication date, document type and source.

How The Dataset Of PQAI looks like?

The results that PQAI curates for you are not limited to just patents. This tool gives you results that include articles, research papers, R&D, and more. PQAI’s database as of today stands at 11 million US patents and applications and nearly 11.5 million research papers in the fields of engineering and computer science. 

What really sets this apart, and allows you more time is how you consume the results you are given. The tool will provide you with representative results from different sectors that have a relevance to your idea. Further, it extracts relevant snippets and maps them to different parts of your query. This saves the time you would spend reviewing or analysing an entire document to locate possible prior art

Let’s Sum It Up

PQAI has been created after mindful research and is still a work in progress. We have taken the concerns of inventors into consideration and are continuously training the AI engine to provide even better results. Easy, curated access to millions of documents and easy search navigation make this the ideal place to begin your patenting/entrepreneurial journey. Prior art searches don’t need to be a chore anymore, especially for inventors like you! Happy inventing!

The Ultimate Guide To Prior Art For Inventors

The Ultimate Guide To Prior Art For Inventors PQAI

Inventors get so many queries like: Can I get a patent on my invention? What is prior art? Can a YouTube video count as prior art? We have prepared this guide to prior art to help inventors succeed in their patent seeking journey.

Can I Get A Patent On My Invention?

You came up with a breakthrough idea, say a cot that can put babies to sleep using a particular vibration pattern and soothing music. A lot of parents can’t catch enough sleep if their babies don’t sleep well at night. You have solved a problem that a lot of parents face. A lot of parents might be interested in buying such a cot.  You see a possibility of a great revenue stream. And because you feel your invention is novel,  you see that it has the potential to be patented.

However, there is a possibility that someone else has already come up with a similar invention and received a patent on it. Now that patent is a “prior-art” that can stop you from receiving a patent on your invention.

Can I get A Patent On my Invention? It's too late

Hope this example gave you the basic idea of prior art. In this post, we have brought to you a detailed, visual, and very clear explanation of everything you need to know about it. We have also shared how you can conduct a “Zero Budget Prior Art Search”.

What is Prior Art?

Prior art is any evidence that an invention is already in existence or publicly available prior to the filing date of the patent application. The invention does not need to be commercially available or exist physically to be prior art. It suffices that the invention has been previously described or shown to be something that contains the use of technology that is like your invention. 

So, if you file a patent without the searching for prior art and the patent examiner finds that your invention is not novel (new), you receive ‘§102 type rejection’: “Non novel or not new”.

“21.28% of patent applications got rejected over a period of ~4 years from 2017 to September 2020 because they did not meet the ‘novelty’ criterion.

There is one more common reason for rejection: ‘§103 type rejection’: “Obvious improvement over the prior-art”.

46.95% of patent applications got rejected over a period of ~4 years from 2017 to September 2020 because they did not meet the ‘non-obviousness’ criterion.

Note: Stats are based on the rejections (Final +Non Final) given by the Patent Examiners, for the US applications from 2017 to September 2020

The §102 and §103 constitute 68.23% of the total rejections. This indicates that either an examiner found a prior art questioning the novelty of an invention disclosed or an examiner combined two or more references to prove that an invention disclosed is obvious.

It is critical that inventors invest in a thorough search of past and present products and patents before they conclude on the novelty and non – obviousness of their invention.

Does this count As Prior Art?

A very similar invention is available in a video on Youtube, does this mean we cannot obtain a patent for that invention?

It certainly can depending on the similarity with your invention.

Credits: r/patents

Inventors often have queries about what counts as a prior art and if a certain public information can be the reason for rejection of their patent application. Such disclosures can definitely act as a prior art depending upon the level of similarity with your invention.

Any invention that has been publicly disclosed or made publicly available in any language or in any part of the world may count as prior art. 

It can be a:

  • product that was available for sale,  
  • an invention used commercially, 
  • printed or electronic forms of articles, 
  • publications, texts, journals, 
  • presentation at a public event, 
  • or any form of public use of the invention.

An existing product or patent is the most obvious form of prior art. Inventors often assume that because they cannot find an existing commercial product containing their invention, their invention must be novel. 

This assumption is far from reality. Inventions often never become products, yet there may be public records showing their existence. That record counts as prior art.

Does This Not Count As A Prior Art?

Generally, information that is disclosed or becomes available to the public after the ‘effective’ filing date (or priority date) of your patent application would not qualify as prior art. 

Also, patent applications that are filed after yours generally would not qualify as prior art.

#sidenote: A trade secret does not count as a prior art.

What Is Prior Art Under AIA:  §102, §103?

The America Invents Act (AIA) is a complex bill that includes a significant change to U.S. patent law The AIA relates fundamentally to whether or not an invention can be classified as prior art with arguably the most impactful change being the shift from a “first to invent” system to a “first inventor to file” system on March 16, 2013.

Section 102: First to Invent Vs. First Inventor to File

Pre-AIA Sections 102(a) and 102(e): Patents were granted using the “first to invent” system. The section provides that an inventor is not entitled to a patent if the claimed invention was already patented, described in a patent or is in public use by another inventor before the claimed invention.

For example, under old U.S. patent law, an inventor could rely on the earliest documented date of the invention and obtain priority to another inventor with an earlier-filed application. 

First To Invent Vs First To File Representation

AIA Section 102(a): Prevents a patent if the claimed invention was described in a patent or patent application filed before the effective filing date of the invention.

For example, under the AIA, the U.S. Patent and Trademark Office (USPTO) will award a patent to an inventor who has the earliest effective filing date. The earliest effective filing date is the original date that the application was filed.

Section 103: Obviousness

Pre-AIA Section 103: Prevents patenting of an invention if it would have been obvious at the time the claimed invention was made.

AIA Section 103: A patent may not be obtained if the invention would have been obvious before the effective filing date of the claimed invention.

Example: Prior-art reference (1) teaches encryption. Prior-art reference (2) teaches how to send an email. Then sending an encrypted email would not be novel. It would be ‘obvious’ because there is a motivation to send emails in a form that would allow them to be read only by the intended recipient. 

How To Conduct A Prior Art Search?

The easiest way to do the search should be like:

  • telling your innovative idea to a friend,
  • and asking the friend if he has heard or seen something like it.
  • assuming that the friend knows it all, if he says he has not heard of it;
  • your invention is new and there is a possibility to get a patent over it.

Because you just want to determine if your invention is new or novel enough to get a patent on it.

However that’s the ideal scenario and far from reality.

Free Prior Art Search Resources

For an inventor who is (often) not skilled to conduct a prior art search it can be quite challenging to do so. Although there are many free resources for patent or prior art searching available,   most of them do not understand natural language queries.  To name a few:

Besides that many times companies use deceptive language in patents to hide their IP activity from competitors. That makes it further difficult to find the relevant prior art.

Inventor’s Plea

Look at the snapshot below, we have picked this from reddit (r/patents). Clearly the inventor  tried to look for prior art in USPTO and Google patents  but faced difficulty with language and search navigation.                                                               

credits: r/patents on reddit

Challenges To Prior Art Search 

The Right Keywords (Synonyms)

“Bendable”, “Foldable”, “Flexible” are some synonyms that can be used to refer to the same aspect of an invention.  Different patent drafters would have used different terms. However you don’t want to miss out on any relevant result and hence it would be needed to take care of synonyms while searching.

The Complex Search Queries

The patents databases are a huge set of information. Thousands of results are received for a single query. complex search queries are the only way to narrow down the results. These queries are nothing but keywords arranged with a specific logic (Boolean (AND/OR) search string) to get relevant prior art results. 

The Patent Language

The patents are usually drafted in a very specific language, difficult for a person with the non-ip background to comprehend. For example: a computer might be written as “an information exchange system” to cover any other similar devices like phone, tablet etc. 

How Much Does It Cost To Get A Prior Art Search Done?

Professional Search Fees

According to upcounsel if you hire a professional to conduct an in-depth prior art search, it shall cost you anything between $1000 to $3000 based on the complexity of the invention.  

  • $1,000 to $1,250 for simple inventions
  • $1,250 to $1,500 for slightly complex inventions
  • $1,500 to $2,000 for moderately or relatively complex inventions
  • $2,000 to $3,000 for highly complex inventions or software

Government Search Fees

The USPTO fee for conducting a patent search or prior art search varies according to the entity size. The fee is less for small and micro entities, so to say it’s less for individual inventors like yourself. ($40 to $700)

The snapshot presented below is from USPTO’s website that shares complete details of patent related fees.

USPTO Patent Search Fee Snapshot

Depending on the type of patent, the fee is different: Utility, Design or Plant.

Here are quick definitions for different types of patents based on which you can decide which category does your invention fall in.

Utility Patent

It protects process, manufacture, composition of matter and a useful machine.

Design Patent

It protects the shape, appearance, patterns, design, layout or looks of the product.

Plant Patent

It protects a new and unique plant’s key characteristics from being copied, sold or used by others.

How To Conduct A Prior Art Search Yourself With Zero Budget?

To conduct a comprehensive prior art search you either need money or skill. With money you can hire an IP research firm to conduct the prior art search for you. With skill you can use other prior art search engines that require you to create sophisticated keyword search strings and go through hundreds of documents to find relevant prior art.

However if you just want to determine the novelty aspect of your invention, you neither need money nor skill.

Yes you read it right!

We would say, don’t go by our words, try it out yourself!

PQAI Prior Art Search Tool Advantages: Zero Budget and No Prior Art Search Skills Needed

A quick search on PQAI (An Initiative by AT&T ) is enough for you to determine the novelty of your invention.

Prior Art Search Using PQAI

Here is how you can conduct the search:

  1. Go to search.projectpq.ai .
  2. You shall see a search query box as shown below.
PQAI Prior Art Search Tool Snapshot

3. Let’s try a sample query. How about – “A machine learning based system to sort out the waste based on the images captured by the camera in the past”?

PQAI Prior Art Search Tool Snapshot

Now, let’s take a look at the snapshot presented above. We actually found a prior art similar to the invention query we entered.

4. The best part is each result shows the claim mapping. That means, the relevant section in the prior art document that matches with the invention query. This makes it super easy for the researcher to look for matching elements between invention and the result.

5. Each result is accompanied with the following options:

  • Save – Just like you bookmark the webpages, you can save the results. Saved results are available for your future reference.
Saved Results Section - PQAI Prior Art Search Tool Snapshot
  • Find Similar – This option helps in further refining the search results. As the name suggests you get to see 10 more similar results matching that selected result.
  • View Document – With this option, you can view the selected result document in a new tab. Example: If it’s a US patent, you will be directed to the Google patents link for the selected patent.
  • Feedback – With a thumbs up or thumbs down, you can give feedback on the relevancy of the result.

6. If this has given you a decent idea of how you can use PQAI to conduct a prior art search. Go ahead and give it a try!

Once you establish the novelty of your invention, the next step is to fill the invention disclosure form. An up-to-date invention disclosure form shall help you prepare for a meeting with a patent attorney.

Let’s Sum It Up

You don’t want USPTO to reject your patent application because someone else has already patented an invention like yours. To ensure the same it’s necessary to find out if your invention is new before you file a patent over it. The easiest and the most cost-effective way to do so is using  PQAI Prior Art Search Engine.

Besides determining the novelty of your invention, you need to check your invention for patentability. You need to make sure that your invention is a patentable subject matter.

Conducting prior art search benefits you in many other ways than just novelty determination. To name a few:

  1. Conducting a prior art search early in the process shall help you save resources which would have been otherwise used in pursuing it for patenting. As it won’t make financial sense if someone else has already patented it.
  2. When you read the patents on the invention like yours, you shall be in a better position to refine your idea. And refine it in a manner that it’s new and non-obvious.

If you have any queries around prior art search using PQAI, feel free to write to us “sam@projectpq.ai”.