Case Studies: Japanese Prior Art Search

Biotech Communication Optical communication
Machinery Electronics Pharmaceutical
Business model Medical Device Computer
Pharmaceutical Biotechnology Semi-conductor

Field: Automatic Transaction System Patent, business model field

Project duration: 4 weeks

Client: A major patent law firm

Type of search: Invalidation search, to uncover prior art by searching Japanese patent documents to invalidate an US patent.

Field of Technology: Business model: transaction system for financial institutions.

Brief Description of the Target Patent to be Invalidated: The target patent is about an automatic transaction and payment processing system for financial institutions such as banks, securities firms, and trading companies, etc. This patent was filed in 2002, with corresponding patent family members filed in Europe, Canada, Japan, China and other countries.

Search strategy:
Considering there are no well-defined key word strings to describe the claimed features of the target patent, we used mainly classification searches, with full text key word strings search as a supplemental search.

First search: Using F Term, Japanese patent unique classification search
5B055CB11 + 5B055CC13 + 5B055MM14 + 5B055MM15
Hits generated from the search: 690

Second search: Using FI code, another Japanese patent unique classification search
[(G06F15/30@H + G06F17/60,234@Q) - (5B055CB11 + 5B055CC13 + 5B055MM14 + 5B055MM15)]
Hits generated from the search: 365

Third search: Expanding the search to wider scope using FT and FI combination
[(2C005HB10+3E040AA05) – (G06F15/30@H + G06F17/60,234@Q + 5B055CB11 + 5B055CC13 + 5B055MM14 + 5B055MM15)
Hits generated from the search: 889

Fourth search: Using full text search in Japanese synonymous words
Hits generated from the search: 642

Database used: NRI, PATOLIS (for classification search), and IPDL (for downloading full patents for review.

5 Japanese patent documents are submitted to the client for a further review. Out of the 5 documents, one patent is considered to be a document of relevance, which means the claimed invention of the target patent cannot be considered non-obviousness when the document is combined with one or more other documents, such combination being obvious to a person skilled in the art.

Thank you kindly for the speedy delivery. I will be sure to advise the client of your remarks regarding the translation. I will also make sure that the reviewer has this information available. I can’t say thank you enough. You have done a great job.

- John Hall, Texas