My recent post, ‘Patent Sharks (Trolls?) – insightful or missing the point?‘ sparked an interesting discussion about hidden patents. Are they always able to be found? is the process 100% guarranteed? what can you do about it?
One of the interesting aspects of the discussion was the extent to which patents are now being drafted to make them harder to find, by using alternative terminology. Allan Main, a regular reader of the blog, gave the great example of the term ‘mammalian maternal excretions’ being used instead of ‘milk’. I suggested that great patent searchers will thoroughly understand the technology and try alternative descriptors that would include such terms. (Though I hastily added that a search is never 100% guarranteed.)
I also mentioned that such patents are at risk of invalidation if the descriptors don’t adequately describe the invention – for lack of enablement / 112 / lack of sufficiency. So this helps the searcher to find them.
If this can be achieved, one of the interesting side benefits of finding alternative, hard to search, terminology is that it makes it harder to find relevant prior art. ‘Mammalian maternal excretions’ won’t get you there because it clearly describes milk. However, what about a patent claim that characterises milk by virtue of some property that has heretofore not been found in the literature? I’m not saying that one can today get a valid claim to milk by this method, but a claim to some novel feature of milk about which there is a risk of an obviousness argument might fit the bill. This technique has, of course, been used for decades in the Pharmaceutical industry.