Digital Books for Patent Prosecution?

Although copyright issues have consumed the spotlight when it comes to Google Books, a recent thread has suggested that this feature may be of great use when it comes to patent prosecution.

More specifically, the suggestion has been that Google Books has potential to become useful for prior art searching undertaken during preparation of a patent application.  During that process, patent agents must scrutinize publicly available documents in order to ascertain what information is already in the public domain.  Any publicly available information may narrow the scope of proposed claims in a patent, since a patentee cannot validly claim what is already described in a publicly available document.  Nor can a patentee claim subject-matter which would be obvious based on publicly available documents.

Although patent examiners and agents do turn to textbooks in preparing and examining patent applications, this can be rare, since textbooks are sometimes seen as being too general to be useful.  This is because textbooks are typically prepared with general information for use as teaching tools, and are not typically the first choice for publishing cutting-edge advances that are relevant to patent applications.  On the other hand, periodicals, due to their characteristic frequent publication, are often the first to share novel technological and scientific advances with the public.

Of course, sometimes general information is exactly what is needed for a patent examiner seeking to understand a basic concept or principle in a specific field.  This concept was addressed by the Canadian Intellectual Property Office (CIPO) in a report canvassing the patent law standard on obviousness.  According to that report, although the test of obviousness was being applied consistently by patent examiners between different fields of technology, the benchmark at which obviousness was being judged was not constant.  One possibility suggested for this observation related to the benchmark for obviousness which incorporates the “common general knowledge” of the ordinary workman in the relevant scientific field.  In areas of newer technology, the proposition was that patent examiners had more difficulty determining the content of the common general knowledge and effectively lowered the expected general knowledge for that field.

That report suggested that the lowering of the benchmark was exactly what was happening in the field of biotechnology.  The study found that very few objections on obviousness were raised by Canadian biotechnology examiners, who felt that the limited knowledge in the field indicated less predictability such that more inventions were being seen to meet the requirement of being non-obvious.  Correspondingly, examiners were hesitant to allow patent claims to cover subject matter which went beyond the examples cited in an application.

Although that study was published in 1996, the bottom-line has application today.  If Google Books, or any other service, for that matter, makes good on an attempt to digitize textbooks relevant to an evolving field of technology, it could be that their service will disseminate exactly the type of general, basic information that is required for patent examiners and agents to properly and efficiently evaluate the common general knowledge in that field.