Metaphor, Significance and Heirarchy in Patent Analysis

Three essential general characteristics must be considered when analyzing an inventive concept (to prepare a patent search or an application) or a patent (to prepare a validity search): metaphor, significance and heirarchy.

Metaphor: in linguistics, a metaphor is the comparison or substitution of a word having a representation in one subject area or environment, with a word from a different subject area or environment. One kind of metaphor that is commonly used in France (and elsewhere in Europe) is to describe something enjoyable as "delicious" regardless of whether any taste is actually involved, as in the expression: "That movie was simply delicious".

Thus, a "metaphor" is use of a word denoting a concept in one setting in another setting. This sets up a comparison between the two settings. For example, in the use of the word "delicious", one might extend the comparison between a taste experience and a non-taste experience, by describing an experience or situation as being "spicy" or "bland", thereby comparing the taste and non-taste experiences.

In patent analysis, the usual corresponding term for a metaphor is "analogy", leading to the comparative term "analogous". This term is frequently used to compare subject matter that has some similarity. For example, in a major court case in the early to mid 1800s, two patent holders had claims reciting the same invention! The invention was a still, or boiler, involved in the production of a liquid food product for consumption. One of the patents was for producing milk while the other was for producing beer. Although I do not have the citation for this court case (I am still looking for it), it was very important in that the US Patent Office was chastized by the court for failing to prevent this situation from occurring.

The response by the US Patent Office was to make sure that patent examiners considered analogous art areas in their search for the inventive concept. This also led to the creation of US Patent Classes directed to function-based rather than industry-based subject areas. For example, Class 99 (added in those early days in response to this court case) is directed to Foods and Beverages: Apparatus. Thus patent examiners were then instructed to search this class rather than the previously segregated classes directed to dairy and to beer production.

Significance: in determining patentability, an examiner seeks a significant feature, element or relationship on which to base their reasons for allowance of a patent application. The word "significant" is not actually used, but it is directly related to the concept of a "flash of genius" or "inventive feature". The significant feature and the field of application of the feature determine the search areas for the inventive concept.

Heirarchy: when comparing somewhat unrelated subjects or elements or features, the US Classification System has established an arbitrary heirarchy that ensures that a patent application goes to the most qualified patent examiner for examination, and that the issued patent is placed in the "correct" classification area according to heirarchy. A patent searcher can find this heirarchy given in the uspto.gov website. Thus, when an inventive concept applies to more than one subject matter or to different technical fields, the heirarchy should guide the searcher to the most appropriate classification areas to consider.

Francis "Fran" Lorin
siberkhem.com