1. Intellectual Property Generation - Part 21 ENMA 290: Intellectual Property Generation The Initial IP Scan Three Easy Steps to Climb to the Top of the Patent Tree WUT - Spring, 2007

2. Intellectual Property Generation - Part 22 Stage Gate Technology Development and Review Intellectual Property Generation Technology Roadmapping Voice of the Customer New Concept Ideation An Integrated Strategic Technology Planning and Development Environment WUT - Spring, 2007

3. Intellectual Property Generation - Part 23 The Initial IP Scan During the early stages* of development, you need to do an “initial IP scan”. The initial scan should be one element of a general technical literature scan that tells you: - What types of problems are being solved by others, - How the problems are being solved, - Who is solving the problems. The initial IP scan is a critical element in formulating the problem and the solutions the team is proposing to develop. * You should continuously re-scan IP during subsequent project stages. WUT - Spring, 2007

4. Intellectual Property Generation - Part 24 IP Scan vs. IP Search During the preparation of a patent application, it is necessary to do an exhaustive IP search to completely characterize prior art. The results of the IP search become part of the patent application. The initial IP scan is NOT to be confused with the IP search done in support of a patent application. These two processes have totally different purposes: Initial IP scan: Guide and stimulate the innovation process, IP search: Protect intellectual property. WUT - Spring, 2007

5. Intellectual Property Generation - Part 25 IP Scan vs. IP Search The IP scan can and should be done by the technologists on the project. The technologist is often assisted by a search expert. The IP search is best done through a patent attorney. WUT - Spring, 2007

6. Intellectual Property Generation - Part 26 Initial IP Scan Process – IP Database A number of tools are available to inventors to conduct patent searches, including the United States Patent and Trademark Office (USPTO) search engine found at www.uspto.gov.www.uspto.gov While this search engine is not as sophisticated as many available products on the market, it is free and accessible to all inventors with internet access, and is therefore often the search engine of choice for many inventors. The process described here is based on the use of this public search engine. WUT - Spring, 2007

7. Intellectual Property Generation - Part 27 Starting an Initial IP Scan An inventor that has been working in an area for some time typically has a set of key words to use when doing IP scans, and can readily adapt the set for new or changing applications. But a new inventor, or an inventor in a new field, often has difficulty “seeding” the initial IP scan. What key words should you use? With the wrong key words, the result can be, obviously: No relevant hits on the initial scan, and/or An avalanche of irrelevant hits. Let us examine a strategy that can help us solve this problem… WUT - Spring, 2007

8. Intellectual Property Generation - Part 28 Initial IP Scan Process - Strategy There are three primary elements to the strategy behind the process described here: 1.Focus on the problem, not the solution. 2.Focus on inventors, not inventions. 3.Find the top of the invention tree (most recent patent) and work down (back in time). Each element translates to a separate step in the initial IP scan process. WUT - Spring, 2007

9. Intellectual Property Generation - Part 29 Three Steps of the Initial IP Scan Process: Step 1: Use key words from problem statements to find a few patents. Step 2: Use inventor names from these patents to find more, and more recent, patents. Step 3: Use patent number references on these patents to find more, and more recent, patents. Use this process to find the most recent relevant patents. Then work back in time through all related patents. Now lets look at how to do this… WUT - Spring, 2007

10. Intellectual Property Generation - Part 210 Patent Document Structure Click here to see an example patent, which shows where to find:here 1.Inventor names, 2.Earlier patents that this patent references (“References Cited”), 3.More recent patents referenced by this patent (“Referenced By”). The third item is needed to find the top of the patent tree. The second item is needed to help you move back in time once you have used this process to find the top of the patent tree. WUT - Spring, 2007

11. Intellectual Property Generation - Part 211 Patent - References Patent - References Patent - References Patent - References Patent - References Patent - References Patent - References When you find a patent, you can use “Referenced By”” to find earlier patents References Cited Referenced By

12. Intellectual Property Generation - Part 212 Initial IP Scan Process – Strategy for Step 1 The process starts with generation of a short list of potentially- appropriate key words and phrases. These key words are derived by formulating several statements of the problem being addressed by the inventors. Problem statements can be formulated by viewing the problem from the perspective of various “stakeholders”, e.g., individuals: 1.Experiencing the problem, 2.Creating the problem, 3.Paying for the problem (when things go bad), 4.Providing solutions to the problem, 5.Paying for solutions to the problem (fixing source of the problem). Here’s an example… WUT - Spring, 2007

13. Intellectual Property Generation - Part 213 Example: When should the engine oil in an auto be changed? Stakeholder problem statements: The person that owns the car: I don’t like the cost and time of taking my car in for an oil change if it really doesn’t need it, but I don’t want to risk the cost and time of fixing the engine because I didn’t change the oil. The person that drives the car: I don’t want to be stranded with a ruined engine because the oil wasn’t changed. The person that sells the car: I want to be able to tell people that this car’s engine is extremely reliable, and requires a minimum amount of maintenance. The person that maintains the car: What do I do with the oil I just drained out of the car? This problem is about extending engine oil life. WUT - Spring, 2007

14. Intellectual Property Generation - Part 214 Initial IP Scan Process – Strategy for Step 1 Initial key words and phrases (e.g.: “engine oil life”) are extracted from these problem statements. These key words are used to do a first search for a small number of patents potentially related to the problem. Using problem statements provides a broader base and higher potential relevance in the patents found than if specific solutions or technologies are used as key words. This approach prevents researchers from contracting “tunnel vision” during the initial stage of invention. For the initial IP scan, you want to know all the possible solutions. For the preceding example, extending engine oil life is a problem (not a solution) with many potential solutions. WUT - Spring, 2007

15. Intellectual Property Generation - Part 215 Initial IP Scan Process – Strategy for Step 2 After the first step is completed, a second scan is performed, but this time the inventor names from the patents identified in the first scan are used as key words. Inventions are developed by inventors, and the goal here is to identify the inventors working in this field of invention. Inventor scans can be repeated until the most recently-issued patents are found, with subsequent scans using the new inventor names found in the previous scan. WUT - Spring, 2007

16. Intellectual Property Generation - Part 216 Initial IP Scan Process – Strategy for Step 3 In the final search step of this process, patent numbers of relevant patents associated with inventor names found above are used as key words in a patent “referenced by” search. The patent “referenced by” search finds all the patents issued after the patent you are examining that reference that patent. By using inventor names and patent numbers to drive searches, searchers are driven to the top of the invention tree, i.e., to the most recent patents in the target area. Once you have this, you can work back to all preceding related patents. WUT - Spring, 2007

17. Intellectual Property Generation - Part 217 Let’s review the process Initial IP Scan Process… Step 1: Use key words from problem statements to find a few patents. Step 2: Use inventor names from these patents to find more, and more recent, patents. Step 3: Use patent number references on these patents to find more, and more recent, patents. Use this process to find the most recent relevant patents. Then work back in time through all related patents. Now lets look at how to do this… WUT - Spring, 2007

18. Intellectual Property Generation - Part 218 Example Initial IP Scan The following provides an example of a step-by-step application of the Initial IP Scan process described above. The problem to be solved is: When should the oil in an automobile engine be changed? We will use the key phrase “engine oil life”. So, lets do it! WUT - Spring, 2007

19. Intellectual Property Generation - Part 219 Notes on this example: 1.The US Patent Office keeps changing their web site, so the screen shots in this example may look different than what you see, but the functions are the same. 2.This example was done about a year ago, so the search results may look different now.

20. Start your initial IP scan at the US Patent Office: www.uspto.gov Go to “Patents” to search patents

21. Intellectual Property Generation - Part 221 On the next screen, select “SEARCH”

22. Intellectual Property Generation - Part 222 Use the Quick Search option for your Initial IP Scan Everything we do here should be done for published applications, too. Or, just go here: www.uspto.gog/patft/index.ht ml Recently, the USPTO started providing access to filed patent applications as well as issued patents, but this is voluntary.

23. Intellectual Property Generation - Part 223 Here’s the Quick Search screen. Let’s see what’s in this box…

24. Intellectual Property Generation - Part 224 These are the fields we’ll be interested in for the Initial IP Scan Step 1 Step 2 Step 3

25. Intellectual Property Generation - Part 225 I start my search on “engine oil life” in “All Fields” Step 1

26. Intellectual Property Generation - Part 226 I examine some of these patents. I find several patents by some guy named Polczynski. He appears to be an inventor working in this field. I find 45 patents from this search

27. Intellectual Property Generation - Part 227 Now I search again, this time using “Polczynski” and “Inventor Name” Step 2

28. Intellectual Property Generation - Part 228 Here’s a list of Polczynski’s patents: 1 6,380,746 Monitoring fluid condition with a spiral electrode configuration6,380,746 2 6,377,052 Monitoring fluid condition through an aperture6,377,052 3 6,278,281 Fluid condition monitor6,278,281 4 5,910,731 Front end interface circuit and method of tuning the same5,910,731 5 5,069,213 Oximeter sensor assembly with integral cable and encoder5,069,213 6 5,041,187 Oximeter sensor assembly with integral cable and method of forming the same5,041,187 7 4,964,408 Oximeter sensor assembly with integral cable4,964,408 8 4,926,546 PC board panel configuration technique4,926,546 9 4,089,584 Multiple station multiplexed communications link employing a single optical fiber4,089,584 These appear to be relevant patents. So he seems to be an inventor of interest to us. WUT - Spring, 2007 Note: these patents are related to “fluid condition”, a more broad category than “engine oil life”. We may want to return to Step 1 and use “fluid condition” as an initial key word.

29. Intellectual Property Generation - Part 229 Using Polczynski’s most recent patent number in the “Referenced By” field yields the following Quick Search: 6,922,0646,922,064 Fluid quality test method based on impedance 6,861,8516,861,851 Method for on-line monitoring of quality and condition of non- aqueous fluids 6,853,2036,853,203 Oil quality measurement device 6,850,8656,850,865 Monitoring automatic transmission fluid condition in real time 6,844,7456,844,745 Method of determining the fluid condition of diesel engine lubricant during real time operation 6,839,6206,839,620 Detecting soot during real time operation in diesel engine lubricant 6,771,0746,771,074 Probe assembly for a fluid condition monitor and method of making same 6,590,4026,590,402 Engine oil contamination sensor WUT - Spring, 2007 Step 3

30. Intellectual Property Generation - Part 230 United States Patent: 6,922,064 - Issued: July 26, 2005 Title: Fluid quality test method based on impedance Abstract: A system for determining a quality of a fluid includes an impedance cell immersed in the fluid and impedance instrumentation that communicates with the impedance cell. A controller measures a first impedance of the fluid using an electrical signal at a first frequency, measures a second impedance of the fluid using an electrical signal at a second frequency and measures a third impedance of the fluid using an electrical signal at a third frequency. The controller determines a permittivity and a resistivity of the fluid based on the first, second and third impedances. The quality of the fluid is evaluated based on the permittivity and the resistivity. Inventors: Halalay; Ion C., Schwartz; Ellen Shirley E. Assignee: General Motors Corporation Filed: June 18, 2003 WUT - Spring, 2007

31. Intellectual Property Generation - Part 231 So what?! With just 1 key phrase, “engine oil life”, and using only the “Quick Search” option in the free and universally available USPTO search engine… We were able to generate an extensive list of potentially relevant and recent patents by conducting the following three searches: 1.Key word and “All Fields” search, 2.Inventor name and “Inventor Name” search, 3.Patent number and “Referenced By” search. WUT - Spring, 2007

32. Intellectual Property Generation - Part 232 Patent - References Patent - References Patent - References Patent - References Patent - References Patent - References Patent - References 6,380,7466,380,746 Monitoring fluid condition with a spiral electrode configuration 6,380,7466,380,746 Monitoring fluid condition with a spiral electrode configuration 6,922,064 6,922,064 Fluid quality test method based on impedance 6,922,064 6,922,064 Fluid quality test method based on impedance All Fields = engine oil life Inventor = Polczynski All Fields = engine oil life Inventor = Polczynski

33. Intellectual Property Generation - Part 233 What Next? To do a more thorough scan, you can repeat Steps 2 and 3 using inventor names identified in the previous scan. This gets you to the top (most recent) patents related to your initial problem. Using the patents referenced by these patents, it is possible to go back in time to earlier relevant patents. This should provide more than adequate information for an initial IP scan. WUT - Spring, 2007

34. Intellectual Property Generation - Part 234 What Can I learn From the Initial IP Scan? Many ways that others have solved this problem: This tells you what you can’t do, But will also stimulate your own creativity in finding new solutions. References to other forms of technical literature. Who your competitors are (assignee). Who the experts in the field are (in case you want to hire one). Patent attorneys working in this area (in case you need one). How much activity there is in this area (number of patents). Trends in work in this area (patent application dates). And much, much more! WUT - Spring, 2007