The Patentability Search

Chapter 5 The Patentability Search 5:1 Introduction 5:2 What Is a Patentability Search? 5:3 Why Order a Patentability Search? 5:3.1 Economics 5:3.2 A Better Application Can Be Prepared 5:3.3 Commercial Reasons for Conducting a Patentability Search 5:3.4 Avoid Festo 5:3.5 Foreign Filing Decisions 5:4 Why Not to Order a Patentability Search 5:5 Procedure for Ordering a Patentability Search 5:5.1 Selecting the Searcher 5:5.2 Information to Include in the Search Request 5:5.3 Scope of the Search 5:5.4 Cost of the Search 5:5.5 Example of a Search Request Letter 5:6 Limitations of a Patentability Search 5:7 Reporting the Results of the Patentability Search Exhibit 5-1 Letter Ordering Patentability Search Exhibit 5-2 Notice to Clients Regarding Patentability Searches Exhibit 5-3 Letter Reporting Patentability Study Results (Favorable) Exhibit 5-4 Letter Reporting Patentability Study Results (Negative) Exhibit 5-5 Letter Reporting Patentability Study Results (Neutral) 5:1 Introduction This chapter is directed to a procedure that more often than not is conducted before a patent application is written, namely, the patentability search. The following sections discuss what is a patentability search, why do one, why in some circumstances one is not ordered, what the procedure is for ordering a patentability search, what the limitations are on a patentability search, and how to report the results 5 1

5:2 HOW TO WRITE A PATENT APPLICATION of a patentability search. This chapter does not discuss how to actually do a patentability search. In general, the search is left to expert searchers. Most (but not all) practitioners do not conduct their own searches. 5:2 What Is a Patentability Search? Only infrequently does a patentability search actually ascertain whether an invention is novel. As discussed in section 5:6 below, because of the limitations of a patentability search, rarely is a reference developed that anticipates or renders an invention non-novel. It is usually impossible with a conventional patentability search to determine whether an invention is truly novel; that is, it is impossible to prove a negative, namely that there is no anticipatory reference anywhere in the world. Most patentability searches are directed to determining whether an invention is obvious or nonobvious. One of the key purposes of the search is to determine the chances of obtaining a patent in the Patent Office. Most patent applications that do not issue fail to do so because of the Patent Office s perception that the invention is obvious under 35 U.S.C. 103. Because a patentability search is conducted in an attempt to determine the likelihood that the U.S. Patent Office will issue a patent on a particular invention, patentability searches generally are used to determine if an invention is obvious. A patentability search usually has the following elements: 1. The first element is a search request made from the practitioner to the person doing the search. The requesting letter usually identifies how much financial effort is to be expended on the search, defines the invention, and identifies the general categories of references that are to be investigated. 2. The second element is the actual search conducted by the searcher. 3. The third element is a review of the references developed by the searcher. 4. The fourth element is a report to the client regarding the search results. A patentability search is not a validity search. The term validity search is used to refer to searches that are substantially more thorough and more complete than the typical patentability search. Much more effort is expended on validity searches. They are usually reserved for situations where much more is riding on the results of the search than just a decision whether or not to file a patent application, 5 2

The Patentability Search 5:3.2 which is the principal objective of a patentability search. Validity searches are frequently used in the following contexts: 1. By the defendant in a patent infringement suit in order to find references to invalidate the patent in suit. 2. By the patentee before instituting a patent infringement suit to determine the likelihood of the patent s surviving the litigation. 3. By a prospective licensee or purchaser of a patent to determine how much the patent is worth. 5:3 Why Order a Patentability Search? There are many reasons for ordering a patentability search, beyond the obvious reason of determining whether or not to file a patent application. These are discussed in subsections 5:3.1 to 5:3.5. 5:3.1 Economics A patentability search can be conducted to assist in making the decision of whether or not to invest the money in filing a patent application. The cost of a patentability search is usually much less than the cost of a patent application. The typical ratio of the cost of a patentability search to the cost of the corresponding patent application is anywhere from 1:4 to 1:20, with a typical midrange number being about 1:7. If the ratio is 1:7, then if, as a result of a patentability search, a decision is made not to file an application one out of seven times, the patentability search has justified itself on this basis alone. Patentability searches are only infrequently conducted for design patents. Design patent applications cost substantially less than utility applications, and there is little economic justification for conducting a patentability search before filing a design patent application. 5:3.2 A Better Application Can Be Prepared The patentability search results allow a practitioner to prepare a better patent application. Patentability searches help identify the features of the invention that are most likely to be patentable. With this knowledge, the practitioner can write an application that stresses those features and be certain to have an adequate disclosure of those features in the specification and display them in the drawings. Without a patentability search, the emphasis of the application can improperly be placed on nonpatentable or trivial features. Moreover, by having typical patents in the art, it is much easier for the patent practitioner to write the application. Sometimes chunks of the specification of a prior art patent can be lifted bodily or 5 3

5:3.3 HOW TO WRITE A PATENT APPLICATION incorporated by reference, as discussed in chapter 9, into the new patent application. This allows the application to be prepared with less effort, and thus at a lower cost to the client. Another advantage of a patentability search is that prior art patents reveal to the practitioner terminology typically used in the art and how much detail needs to be put in the patent application. The prior art patents provide an indication of the level of skill in the art and allow the practitioner to determine how much disclosure is needed to enable those of ordinary skill in the art to practice an invention. Thus, having prior art patents allows the practitioner to ascertain early how much information needs to be included in the application to comply with the requirements of 35 U.S.C. 112. Another advantage of having prior art patents available is that ideas for claim structure, scope of claims, and different types of claims other practitioners have used in the art are made available. Why re-invent the wheel when excellent guidance in preparing claims for an invention can be obtained from prior art patents? 5:3.3 Commercial Reasons for Conducting a Patentability Search There are sound commercial reasons why a client would want a patentability search. Often the commercial potential of a product depends upon whether or not a patent can be obtained. For many products, it makes no sense for the client to enter the market if the exclusivity provided by a U.S. patent cannot be achieved. The ability to prevent knockoffs can be a key factor in the commercial viability of a particular product. In these situations, the client needs an early indication of the chances of obtaining a U.S. patent. If a substantial capital investment is involved, the client may even go beyond a patentability search and request a patentability study. 5:3.4 Avoid Festo A reason to conduct a thorough patentability search is to avoid the holding of Festo. 1 According to Festo, when there is prosecution history estoppel relating to a claim element such as by narrowing the claim element to avoid prior art, the availability of the doctrine of equivalents for that claim element is very limited. By performing a thorough prior art search, it may be possible to draft the claims so that no amendment is needed during prosecution. This is very difficult to accomplish when the prior art is unknown at the time the claims are drafted. 1. Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722 (2002). 5 4

The Patentability Search 5:4 5:3.5 Foreign Filing Decisions Many searches are useful in determining whether or not to file international applications. The cost of international applications is very high, and in some countries, such as Japan, it can approach the cost of the initial U.S. filing. Foreign filings usually need to be effected within one year of the U.S. filing date to obtain the benefit of the Paris Convention and other treaties. Often, no search report is received from the U.S. Patent Office sufficiently early to be helpful in determining whether or not to file internationally. Accordingly, in view of the cost of foreign filing, it makes eminent sense to conduct a patentability search before making the decision of whether or not to file international applications. It makes very little sense to spend $10,000 to $20,000 on international applications only to learn that an anticipatory reference was sitting in the files of the U.S. Patent Office. 5:4 Why Not to Order a Patentability Search Although there are many good reasons for ordering a patentability search, as discussed in the preceding section, there are many situations in which a patentability search is not ordered. Before recommending to a client whether or not to conduct a patentability search, those situations need to be considered. They include the following: 1. The client can afford only either a patentability search or a patent application. The patent application should be filed without first conducting a patentability search. It makes little sense to order a patentability search for a client that cannot afford both a patentability search and a patent application. If the patentability search comes out favorable, and the client cannot afford the patent application because money was spent on the patentability search, it was very foolish to order the patentability search. 2. Frequently, there is insufficient time to order a patentability search before filing a patent application. There are many times that a patent application has to be prepared very quickly. For example, if the client is about to release the product and needs patent pending on the product to deter potential competitors from copying the product, the application must be filed quickly. Other situations include when a statutory bar under 35 U.S.C. 102(b) is running. Another situation in which an application needs to be filed promptly is when the client is ready to publish a paper about the invention, or about to release the product, and there is interest in international filing. 5 5

5:5 HOW TO WRITE A PATENT APPLICATION Many foreign countries, including Japan and Germany, are absolute patentability countries. If a paper is published about the invention before the U.S. patent application is filed, then, in absolute patentability countries, it would be impossible to obtain a patent. When there is limited time available for conducting a patentability search, many practitioners have the patentability search conducted and the patent application prepared in parallel, that is, at the same time. If the results of the patentability search are available before the application is completed, then it is possible to fine-tune the application based on the results of the patentability search. Even if a U.S. application has been filed, the results of the patentability search may indicate that the preparation of a continuation-inpart application is needed, or that changes are needed in the U.S. application before it is filed internationally. Thus, even when there is insufficient time to complete a patentability search before filing the U.S. application, it may be valuable to complete a patentability search afterwards in view of the advantages discussed in the preceding section. 3. Another reason for not conducting a patentability search is that there is nothing to be learned by it. In some technologies, there is nothing available in the published literature, because the technology is so new, or the technology has a tradition of secrecy and nonpublication. Another time when nothing can be learned by the patentability search is when the inventor is very knowledgeable in the field and is doing research at the cutting edge of the technology. These situations often arise in dealing with university researchers who are the leaders in their field. However, even with researchers, the author has often been able to develop a surprise reference as a result of a patentability search. 5:5 Procedure for Ordering a Patentability Search Ordering a patentability search is a straightforward procedure. Once the searcher is chosen, all that needs to be done is to provide the searcher with sufficient information to investigate the patentability of the features that are most likely patentable, along with guidance as to the budget. 5 6

The Patentability Search 5:5.3 5:5.1 Selecting the Searcher Selection of an appropriate searcher is often problematic. The best guidance can be obtained from other practitioners who have had success with particular searchers. Choosing an incompetent searcher, or a searcher not competent in a particular technology, is foolhardy. Not only can the cost of the search be wasted, but a false sense of security can be the result. When picking a searcher, be certain that the searcher is competent in the particular technology. Searchers specialize in particular areas, such as electrical, biotechnology, chemical, metallurgical, electrical, computer, and mechanical. More than one searcher may be used. A first searcher can be used for the files of the Patent Office, a second searcher for computerized literature searches, and a third searcher for foreign patents. 5:5.2 Information to Include in the Search Request In the search request, provide information sufficient that an adequate search can be conducted. Generally, the more information the better. If drawings or photographs of the invention are available, they should be provided. The search request should identify those features of the invention that the inventor believes may be patentable. It is also helpful to identify the advantages of the invention. The budget should be specified to the searchers. Most searchers have standard charges, and if a standard search at the standard charge is to be done, all that needs to be stated in the search request letter is to conduct the usual patentability search. If any patents or prior art are available, they can be provided to the searcher. Having a relevant patent can be of great assistance to the searcher, since it can help identify the classes that should be searched. If the search is to extend beyond the files of the Patent Office, the searcher needs to be told that. The searcher should be encouraged to consult with the examiner in a particular art. Competent searchers often do this on their own. The examiners are the best source of information for identifying the classes in which a search should be conducted. 5:5.3 Scope of the Search Invariably, the search includes a review of U.S. patents. The typical patentability search is conducted only in the files of the U.S. Patent Office. The searcher identifies the classes in which the invention is classified using the Manual of Classification provided by the Patent Office. Then, all the patents in a particular class are reviewed. The searcher identifies those patents that are particularly relevant in order to provide them to the practitioner requesting the search. 5 7

5:5.4 HOW TO WRITE A PATENT APPLICATION A search limited to the files of the U.S. Patent Office is often inadequate in such fast-developing technologies as biotechnology and computer software. In those circumstances, the searcher is often authorized and requested to complement the search with a literature search. Further, in some technologies, the leaders are not American researchers, and foreign patents can be a better search source. Most searches of U.S. patents are computerized, using databases available at such sites as www.uspto.gov (the Patent Office website), Google, and www.freepatentsonline.com. Thus, depending on the invention, U.S. patents, foreign patents, and nonpatent literature can be searched. It all depends upon the particular technology and the budget. Before ordering a search, these considerations should be discussed with the inventor. The inventor can provide a budget, and answer the question as to what literature would have valuable information. Also, the inventor can provide key words for conducting a computer search. 5:5.4 Cost of the Search The amount of effort afforded to the patentability search is primarily a factor of the cost of preparing a patent application. It makes little sense to spend $5,000 on a search when an application can be filed for $10,000. In 2009 dollars, the total cost for a patentability search is usually less than $2,000, including searcher fees, which typically are between $150 and $500, depending upon the complexity of the search, the technology involved, the quality of the searcher, and the searcher s overhead. 5:5.5 Example of a Search Request Letter A typical request letter is provided as Exhibit 5-1, and the following annotations apply to the exhibit: (a) (b) (c) (d) The word usual is interpreted by most searchers to mean that the search will be conducted at the standard charge, and only the files of the U.S. Patent Office will be examined. If something beyond U.S. patents needs to be examined, the searcher needs to be told. A drawing is enclosed, which is of great assistance. Truly, a picture is worth a thousand words to the searcher. A U.S. patent is enclosed to assist the searcher in identifying the classes to search. The novel features are identified, so the searcher knows what to look for. 5 8

The Patentability Search 5:7 (e) (f) It is beneficial to include in the letter an expected deadline. Otherwise, the search request can repeatedly continue to be moved to the bottom of the searcher s stack. Explicitly allow the searcher to come back and ask for further authorization. Often, because of the complexity of the technology or the fact that the search needs to cover many classes, the searcher cannot do an effective search within the usual guidelines. Allow the searcher to have the option of asking for further authorization. 5:6 Limitations of a Patentability Search Patentability searches have significant limitations. Usually, they are limited to the files of the U.S. Patent Office from which patents can often be missing. In addition, searchers are known to miss key references or search the wrong classes. Searchers are not perfect, and a perfect search is not financially warranted. If a search approaching perfect is needed, then what should be ordered is a validity study, not a patentability search. It is extremely important that the client be advised of the limitations of a patentability search. Unreasonable expectations should not be encouraged. Exhibit 5-2 is a sample of a standard notice that can be provided to clients, setting forth the limitations of patentability searches. It is recommended that this form be provided to the client at the time the patentability search is ordered. The client should know exactly what is being paid for, including the limitations on the search. The notice regarding limitations does not have to be a separate form. It can be included in the letter confirming that a search has been requested, or in the search report itself. 5:7 Reporting the Results of the Patentability Search In reporting the results of the patentability search to the client, the following subjects need to be covered: 1. The subject matter of the search. 2. The references developed by the search. 3. A brief discussion of the more pertinent references. 4. For an unsophisticated client, a brief discussion of patentability and the nonobviousness requirements. 5 9

5:7 HOW TO WRITE A PATENT APPLICATION 5. The conclusion, if the conclusion is positive (as discussed below, it is not advisable to present negative conclusions in writing). 6. A reminder of the limitations of the patentability search. The author believes that if a conclusion is reached that the invention is not patentable, that should not be expressed in writing. There are many reasons for this. The principal reason is that the practitioner may be wrong, and the letter about nonpatentability can be discovered during litigation of a patent that issues on the invention. Such a letter could have a devastating effect on a jury or judge. Anything that is written relating to a patent application should be written with the assumption that it will be discovered by an adversary during litigation. It is foolhardy to rely on the attorney-client privilege or the workproduct privilege which, in many circumstances, may be held to be inapplicable or waived in patent litigation. Another reason for not providing a negative opinion is that there may be features of the invention that are not appreciated by the practitioner, but that are patentable. The practitioner may have misinterpreted a reference, or read too much into it. Often, the inventor, not the practitioner, is in the best position to determine what makes the invention unique compared to the prior art developed by the search. Thus, for these reasons, if it appears that the results are negative, the results should be reported without expressing an opinion, and the inventor should be requested to review the references and call to discuss the results. When discussing the references, consider that the references will need to be discussed in an information disclosure statement (see chapter 10). Any discrepancy between the analysis of a reference in an opinion letter and the analysis provided to the Patent Office in an information disclosure statement can give rise to probing crossexamination during litigation. Therefore, in describing the references, care must be exercised and it should be assumed that whatever is stated about the references in the report to the client will also be stated to the Patent Office. Exhibits 5-3, 5-4, and 5-5 are sample letters reporting patentability study results that are favorable, negative, and neutral, respectively. 5 10

Exhibit 5-1 Letter Ordering Patentability Search Mr. T. Searcher Re: Patentability Search re Portable Widget Our File No. 1234.56 Dear Mr. Searcher: (a)* Please conduct the usual patentability search for the aboveidentified invention. (b) (c) (d) (e) (f) The subject matter is shown in the attached drawings. The widget shown in the attached drawings is useful for scanning inventory in the supermarket. Unlike prior art scanners, which are represented by the enclosed United States Patent No. 5,000,000, the portable scanner is extremely lightweight and portable. This was done by replacing conventional part A with part B, which is believed to be novel. In addition, conventional parts F, G, and H were combined into a single, new part. Further, instead of using material X, our client has gone to material Y for the housing. This material has never been used for forming such a complex shape before. We need the search results within three weeks. If for some reason, you cannot meet this deadline, please let me know. If further authorization is needed, please contact me in advance. * Annotations see section 5:5.5 in text. 5EX 1

Exhibit 5-2 Notice to Clients Regarding Patentability Searches Patentability searches have limitations that should be considered in using the results of a search. Because of these limitations, it is impossible for us to ever guarantee that a patent will issue on any invention. The limitations include the following: 1. A patentability search principally covers issued United States patents unless indicated otherwise in the search report. U.S. patent applications that have not been published are not searched because they are secret. Also our searchers database may include some foreign patents, periodical articles, and commercial activities as published on the internet may be developed during a patentability search, they are not searched as thorough as are United States patents. 2. The search conducted is a patentability search and not a right to use search, which is conducted to determine whether making, using, or selling an invention would infringe a United States patent. A right to use search is more comprehensive and more expensive than a patentability search. 3. Any opinion we provide is an informed opinion regarding the patentability of your invention. The patentability of an invention is a difficult legal question, and reasonable minds can differ. It is possible that an examiner, a judge, or a competitor may reach a different conclusion. We strongly recommend filing a patent application before publicly disclosing your invention or beginning any commercial activities. Such public disclosure or commercial activities can jeopardize your ability to obtain a patent in the United States and foreign countries. In some important foreign countries, any public disclosure or commercial activity anywhere in the world can prevent you from obtaining a patent. 5EX 3

Exhibit 5-3 Letter Reporting Patentability Study Results (Favorable) Client Re: Patentability Study re Your Invention Our File No. 12345.67 Dear Client: In accordance with your request, we had a patentabilty study conducted for the above-identified invention. For the reasons detailed below, we conclude the invention is most likely patentable. The Search The search was directed to a device that prevents ***. With reference to the enclosed figure, the device 10 comprises ****. Search Result Our searcher developed the following references, a single copy of each of which is enclosed: JP 2006077900 to ABC US 20080640134 to DEF JP 10067413 to GHI US 20080105716 to JKL US 4361518 to MNO US 3184599 to PQR All U.S. patents are classified. The searcher searched in classes *** and consulted with an appropriate examiner in the Patent Office to be sure the appropriate classes were searched. Of particular interest are DEF U.S. Patent Publication 20080640134 and Japanese Document GHI 100674134. DEF is directed to *** There is no discussion in the DEF patent with regard to A*** or B***. The GHI Japanese reference describes a device that includes A*** but not B***. 5EX 5

Exhibit 5-3 Practising Law Institute HOW TO WRITE A PATENT APPLICATION Legal Standard To be patentable, an invention must be useful, novel (i.e., new), and non-obvious. Since the utility of your invention would not be disputed, the main issues are novelty and non-obviousness. The non-obviousness requirement is set forth in 35 U.S.C. 103, which states in part: A patent may not be obtained... if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. The U.S. Patent Office recently provided guidelines to the examiners with regard to how to apply the obviousness test. Those guidelines state: (A) The claimed invention combines prior art elements according to known methods to yield predictable results; (B) The claimed invention simply substitutes one known element for another to obtain predictable results; (C) The claimed invention uses a known technique to improve similar devices (methods, or products) in the same way; (D) The claimed invention applies a known technique to a known device (method, or product) ready for improvement to yield predictable results; (E) The claimed invention is Obvious to try i.e., it chooses from a finite number of identified, predictable solutions, with a reasonable expectation of success; (F) Known work in one field of endeavor may prompt variations for use in either the same field or a different one based on design incentives or other market forces, if the variations would have been predictable to one of ordinary skill in the art; (G) There is some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention. Analysis No single reference teaches all the elements of your invention, and therefore it is novel. 5EX 6

The Patentability Search Exhibit 5-3 With regard to the nonobvious standard, there is a possibility an examiner in the Patent Office could take the position that it would be obvious to modify the DEF device by incorporating A*** as taught by the Japanese reference. However, the combination still lacks B*** which is not taught by any of the references developed by the search. Presently only about 50-60% of patent applications are being allowed. It is our opinion that this invention is over the 60% mark for at least the reason the art does not teach your key feature B***. Conclusion For the reasons detailed above, we conclude your invention is most likely patentable. In considering the results of the search, please review the notice we provided regarding limitations of patentability searches. We did not consider infringement of any of the patents developed by the search. If you would like me to do so, please contact me. If you wish to proceed with a patent application or have any questions, please contact me. Sincerely yours, Sheldon, Mak & Anderson by Jeffrey G. Sheldon 5EX 7

Exhibit 5-4 Letter Reporting Patentability Study Results (Negative) Client Re: Patentability Study re Your Invention Our File No. 12345.67 Dear Client: In accordance with your request, we had a patentabilty study conducted for the above-identified invention. For the reasons detailed below, we conclude the invention is most likely not patentable. The Search The search was directed to a device that prevents ***. With reference to the enclosed figure, the device 10 comprises ****. Search Result Our searcher developed the following references, a single copy of each of which is enclosed: JP 2006077900 to ABC US 20080640134 to DEF JP 10067413 to GHI US 20080105716 to JKL US 4361518 to MNO US 3184599 to PQR All U.S. patents are classified. The searcher searched in classes *** and consulted with an appropriate examiner in the Patent Office to be sure the appropriate classes were searched. Of particular interest are DEF U.S. Patent Publication 20080640134 and GHI Japanese Document 100674134. DEF is directed to *** There is no discussion in the DEF patent with regard to A*** or B***. The Japanese reference describes a device similar to that of DEF and that also includes both A*** and B***. 5EX 9

Exhibit 5-4 Practising Law Institute HOW TO WRITE A PATENT APPLICATION Legal Standard To be patentable, an invention must be useful, novel (i.e., new), and non-obvious. Since the utility of your invention would not be disputed, the main issues are novelty and non-obviousness. The non-obviousness requirement is set forth in 35 U.S.C. 103, which states in part: A patent may not be obtained... if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. The U.S. Patent Office recently provided guidelines to the examiners with regard to how to apply the obviousness test. Those guidelines state: (A) The claimed invention combines prior art elements according to known methods to yield predictable results; (B) The claimed invention simply substitutes one known element for another to obtain predictable results; (C) The claimed invention uses a known technique to improve similar devices (methods, or products) in the same way; (D) The claimed invention applies a known technique to a known device (method, or product) ready for improvement to yield predictable results; (E) The claimed invention is Obvious to try i.e., it chooses from a finite number of identified, predictable solutions, with a reasonable expectation of success; (F) Known work in one field of endeavor may prompt variations for use in either the same field or a different one based on design incentives or other market forces, if the variations would have been predictable to one of ordinary skill in the art; (G) There is some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention. Analysis No single reference teaches all the elements of your invention, and therefore it is novel. 5EX 10

The Patentability Search Exhibit 5-4 With regard to the nonobvious standard, it is likely an examiner in the Patent Office will take the position that it would be obvious to modify the DEF device by incorporating A and B as taught by the Japanese reference. In view of this, we believe it will be difficult to obtain patent protection. Conclusion For the reasons detailed above, we conclude your invention as we understand it is most likely not patentable. However, there may be features of your invention we did not adequately appreciate, or there may be reasons why one of skill in the art would not combine DEF and GHI. If that is the situation, please contact us so we can reconsider our opinion. In considering the results of the search, please review the notice I provided regarding limitations of patentability searches. We did not consider infringement of any of the patents developed by the search. If you would like me to do so, please contact me. If you wish to proceed with a patent application or have any questions, please contact me. Sincerely yours, Jeffrey G. Sheldon 5EX 11

Exhibit 5-5 Letter Reporting Patentability Study Results (Neutral) Re: Patentability Search re Our File No. Dear : In accordance with your request, we had a patentabilty study conducted for the above-identified invention. For the reasons detailed below, we conclude the invention is novel. However, in view of the Patent Office s current position regarding patentability, we estimate there is 50/50 chance of being able to persuade the Patent Office that the invention is unobvious. The Search The search was directed to a device that.... With reference to the enclosed figure, the device 10 comprises a.... Search Result Our searcher developed the following references, a single copy of each of which is enclosed:... Of particular interest is Smith, U.S. Patent No.... and Japanese Document.... Smith is directed to.... The Japanese reference.... Legal Standard To be patentable, a device must be useful, novel (i.e., new), and nonobvious. Since the utility of your invention would not be disputed, the main issues are novelty and non-obviousness. The non-obviousness requirement is set forth in 35 U.S.C. 103, which states in pertinent part: A patent may not be obtained... if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art 5EX 13

Exhibit 5-5 Practising Law Institute HOW TO WRITE A PATENT APPLICATION to which said subject matter pertains. The U.S. Patent Office recently provided guidelines to the examiners with regard to how to apply the obviousness test. Those guidelines state: (A) The claimed invention combines prior art elements according to known methods to yield predictable results; (B) The claimed invention simply substitutes one known element for another to obtain predictable results; (C) The claimed invention uses a known technique to improve similar devices (or methods, or products) in the same way; (D) The claimed invention applies a known technique to a known device (or method, or product) ready for improvement to yield predictable results; (E) The claimed invention is Obvious to try i.e., it chooses from a finite number of identified, predictable solutions, with a reasonable expectation of success; (F) Known work in one field of endeavor may prompt variations for use in either the same field or a different one based on design incentives or other market forces, if the variations would have been predictable to one of ordinary skill in the art; or (G) There is some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention. Analysis No single reference teaches all the elements of your invention, and therefore it is novel. With regard to the nonobvious standard, there is a possibility an examiner in the Patent Office could take the position that it would be obvious to modify the Smith device by incorporating... into the device as taught by the Japanese reference. A contrary argument would be there would be absolutely no use for such... in the Smith device and.... Presently only about 50% of patent applications are being allowed. It is our opinion that this invention fits right in the middle. An examiner could combine the references to conclude the invention as obvious. However, we have at least the counter argument I presented above. 5EX 14

The Patentability Search Exhibit 5-5 Conclusion For the reasons detailed above, we conclude there is about a 50% chance of obtaining patent protection on your invention. If you asked me the chances three years ago, I would have stated the chances were about 70%. However, the Patent Office recently has made it more difficult to obtain a patent. Please consider the enclosed notice regarding limitations of patentability/novelty searches. If you wish to proceed with a patent application or have any questions, please contact me. Enclosures Sincerely yours, 5EX 15