Towards an Ontology of Patent Claims

The building of a domain-specific ontology has been useful in many scientific fields, and resulted in many successful applications, especially in the area of biomedicine (see www.obofoundry.org). A well-developed ontology brings certainty to terms used by practitioners of the arts and sciences, and from certainty follows a stream of benefits in time savings, resource conservation, development of related technologies, easier licensing of a new technologies, inter alia. My project suggests that the development, curation, and sharing
of a structured and controlled vocabulary used in the patent domain for use in writing claims will increase certainty in patent prosecution, and possibly aid in future research for new inventions.

Patent prosecution, the steering of an invention through the government patent process, has a reputation for complexity, inefficiency and uncertainty. Patent attorneys and agents, who are rarely the inventor, are tasked with carving out sufficient intellectual property through the writing of patent claims that will maximize the patent premium of a new invention and provide notice to others about the scope of the claimed invention. These claims must be communicated to a Patent Office examiner, whose experience rarely reaches the level of a “standard practitioner” in a particular art, who then research and clear an invention for a patent. A combination of a large increase in patent applications worldwide over the past decade, increasingly complex inventions in new fields such as
biotechnology and computer science, and compressed time requirements in the patent-granting process has brought greater uncertainty in patent prosecution. The result, in increasing instances, has been that patents have been granted to inventions that are negated in later court actions (often at a trial level by a judge that rarely sees a patent case) at a high monetary cost to all parties involved. Recent landmark patent cases such as Markman and Phillips II, once thought as decisions that would increase certainty with clarifications on how certain language terms would be determined, have
found increasing dissatisfaction among legal commentators.

Technology practitioners conducting R & D (research and development) are also mining patent claims for insight into the direction of future inventive activities. Through the use of multiple agents on several levels, researchers are examining existing patent claim texts in their particular field, and comparing scope of existing patent claims to decide where to focus finite resources for future research.

I assert that a common ontology among the breadth of practitioners within the patent community would bring a wellspring of benefits. To accomplish this, I propose to utilize text-recognition software against the current USPTO public database of over 1.5+ million patents to develop a preliminary controlled vocabulary, then use other software agents such as TRIZ to investigate potential R & D applications.