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Patent Quality Matters | Article One Partners Blog

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How One Community Member Earned Thousands for Patent Research

  
  
  

Article One Partners leverages the power of a community to find patent validity evidence.The Article One team is proud to congratulate one of our Researchers, known as "Specialist", on winning our Study related to a social networking patent

 

Specialist submitted evidence (known as "prior art") that can show the patent, owned by WhoGlue, to be invalid.

 

Specialist is a great role model for those who may not have much experience in a patent's area, but want to dive in:  

 

“Most of the Patent Studies I’ve worked on, I had little to no direct experience with," says Specialist, "I think just generally being able to understand the text of potential prior art and how it relates to the questioned patent was most important.”

How She Searched

Specialist hails from the San Francisco Bay area where she is a Ph.D. candidate in a Bioengineering Program. She also has a B.S. in Electrical Engineering. Specialist says that she is used to searching for papers because she is in graduate school.

 

Article One, however, was her introduction to patents. When choosing which Studies to participate in, Specialist looks for subject matter that she has experience with, or something that is general enough to allow her to be reasonably successful.

 

Google Patents and Google Scholar are Specialist’s preferred research tools, and she notes that the Wayback Machine has come in handy a few times. Specialist likes being able to work on patent searches on her own schedule and enjoys that she can do the research simply using her laptop.

 

When conducting research for an AOP Study, Specialist’s strategy has been mainly to determine good keywords for searching. At times, she has had to use very different keywords to find the patents than are available in the questioned patent.

 

Aside from the Social Network Study, Specialist was also very involved in the Studies on the patents of "Method for Starting and Stopping an Engine" and "Automobile with a Stop/Start System". She notes that she had to use some interesting search terms in order to find good prior art for those Studies.

Her Advice to Current and Future Researchers

To current Article One Researchers, Specialist recommends being very organized. “Keep copies of every potential prior art. Sometimes it is helpful to look for art that is not ‘prior’ and check those references.”

 

Specialist also notes that she was pleasantly surprised to share in the Article One 2009 profit sharing bonus despite only having participated with Article One for a few months prior to distribution. Regarding the profit sharing program, in which the most active AOP researchers share about 5% of the company’s net profit, Specialist says, “I think it gives some incentive for those who do a lot of research, but haven’t won a Study.”

 

To future Article One Researchers out there, Specialist says, “Go for it. I think a lot people have enough lay knowledge to be able to participate in some type of Study. You don’t need any specialized equipment; just the internet, some time, and a little imagination. You may not get the top prize, but you’re bound to get something out of it.”

 

Through her research with Article One, Specialist says, “I’ve learned a great deal about patents and the need for patent reform. It is also pretty cool to know that I could be contributing to some big decisions being made.”

---

Register as a Researcher for Article One Partners. It's free and easy.
Join the community and get paid. You could earn up to $50,000 for your research.

Comments

This is a great summary of how I could earn money even though I don't know about patents! Thanks Specialist!
Posted @ Friday, July 16, 2010 9:49 AM by Matthew
With an announcement like this in Article One's Blog, would that indicate that this particular study is finished or closed?
Posted @ Friday, July 16, 2010 4:25 PM by Richard
Yes, Richard. This particular Study is now closed, and Specialist has been declared the Winner. The result of each Study is announced on the site, and the announcement for WG 164 may be found here.
Posted @ Friday, July 16, 2010 4:33 PM by Oscar
"Specialist joins our growing rank of Genius Advisors. As a winning Advisor, Specialist is awarded 500 profit sharing Points. Advisors who participated in the Study are also awarded profit sharing points." 
 
Does this include other Advisors who participate? 
 
"The determination of winners is based on Article One's analysis, including review and analysis of outside counsel."  
 
"Only a U.S. federal court or the U.S. Patent Office can invalidate a U.S. patent." 
 
Apparently, you are not up on patent law. It currently does not hold US PTO to able to provide a sole decision to invalidate. 
 
It is an oxy moron, to say that the USPTO can or would invalidate a patent, since that is exactly equivalent to a federal agency admitting it made a gross error in judgement. 
 
 
Article One announces only its own decision for the outcome of Studies based on its analysis of the prior art for purposes of determining winners to its Patent Studies. A court or the Patent Office may disagree with Article One's decision. While Article One obtains outside counsel verification, Article One's invalidity position is not a legal opinion. 
 
What about other prior art submitted by the other advisors in the study, is the client (hope that is the proper term here) allowed to use the other art when going to court for defense? And does such client still have ability to use prior art found by their own means? 
 
Article One is not the sole source?
Posted @ Friday, July 16, 2010 5:03 PM by Richard
Thanks for the input Richard. Let me try to address your thoughts and questions. 
 
First, let me address profit sharing points. Almost any action taken on the web site earns profit sharing points; you can earn points by being active in the forum, submitting prior art, and referring friends. For more information on profit sharing, check out this page: http://www.articleonepartners.com/how-it-works/profit-sharing.php 
 
Second, on the invalidation of a patent, there are two paths to a legal holding that a patent is invalid. One way is through the court system and the other is through the U.S. Patent and Trademark Office (USPTO), in a proceeding called a reexamination. In a reexamination, the USPTO can withdraw the original finding of the patent office as to the issuance of the patent, thereby invalidating it. 
 
Reexaminations are a mechanism that is more cost effective than litigation. The basis for reviewing the patent is at the original legal standard of the Patent Office, which is preponderance of the evidence. This is an advantage over courts which have to apply a presumption of validity to a patent and so use the legal standard of clear and convincing evidence. Reexamination is a tool that is being used more widely because of its cost effectiveness. There are some concerns however, including how long the process takes. Please let us know your further thoughts on this, we welcome them. 
 
Finally, the collection of prior art resulting from a Study is provided to the client. The client may, in its discretion, consider one or more responses as related to the purpose of the Study. Advisors, whom we now call Researchers, earn profit sharing points for every response that is relevant to the Study and greater points when the responses are part of the top tier of responses.  
 
Each Study objective is different and the use of prior art by Clients may change over the course of a litigation, such as, for example, after a Markman hearing. Regardless, after the Study close date, Clients make a decision as to the primary responses in the collection and AOP compensates the Researcher who submitted the prior art (we still like the term "Advisors" better by the way and will continue to use this term, as it demonstrates our respect for you). 
 
Thanks for your insights and I hope this addresses your questions. We welcome further discussion.
Posted @ Saturday, July 17, 2010 5:07 PM by David DiGiammarino
Reexamination is an alternative path to litigation. To suggest that the outcome of reexamination is validity or invalidity of a patent. Reexamination at the PTO can allow a different burden of proof and a different route to appeal and more kinds of holding or determinations than the courts. For instance, instead invalidating claims of a patent, the PTO can close prosecution with amended claims to the patent which amended claims may or may not have convinced a jury or court to invalidate. 
Not all reexaminations are a litigation route. There is a kind which can be ordered by the PTO director rather than any requested by any third party. This has already happened to a group of patents. 
 
Patent re-examination procedure as a litigation strategy 
 
Barry P Golob and Amy EL Schoenhard 
Arent Fox PLLC,Washington DC 
 
http://www.buildingipvalue.com/05_NA/075_078.htm 
 
 
 
 
 
Additional advantages of re-examination as a litigation strategy include the following: 
 
• The re-examination process is accomplished by experienced examiners within the USPTO, who also have access to internal re-examination experts, and the process itself is expedited through the USPTO. 
 
• During re-examination, there is no presumption of validity of the patent under 35 USC § 282, as in litigation. Instead, there is a subjective examination of the claims in light of the prior art (see In re Etter, 756 F 2d 852, 855-858 (Fed Cir 1985), cert denied, 474 US 828 (1985)). 
 
• During re-examination, claims are given the broadest reasonable interpretation consistent with the specification (see In re Yamamoto, 740 F 2d 1569, 1571 (Fed Cir 1984)). 
 
• The scope of the claims may be narrowed by the patent owner’s arguments, admissions, amendments to the claims and chosen claim interpretation (the scope of the claims may not be broadened during re-examination (see 35 USC §§ 305 and 314(a))). 
 
• If substantive changes to the claims are made, such that the scope of the claims is changed, infringement damages may only be collected from the issue date of the re-examination certificate – that is, the issuance of the re-examined claims (see 35 USC §§ 252 and 307(b); and Laitram Corp v NEC Corp, 163 F 3d 1342, 1345 (Fed Cir 1998)). 
 
• Re-examination may enable the court to focus on legal rather than technical issues. 
 
• Re-examination is generally governed by well-established patent law principles and practice. 
 
Posted @ Saturday, July 17, 2010 8:04 PM by Richard Roseen
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