Flashcards in L2, Patents & immaterial rights 1 Deck (22)
what is a patent
A negative right
—> preventing others from using the same technology
—> balance industrial control with public exposure
2. process, material, func
— 20 years
— fairly strong IPR
— expensive (annual fees, costly to file)
— Difficult to understand
— still difficult in court???
Describe the anatomy of a patent!
In general they look the same and have the same structure.
— don't focus too much on the title
— only rough description, see if you're in the right field
— company owning the company
— the original filer will be here
4. Filing date
— date when the patent is filed
— priority date —> wh
— specific classification codes for different types of patents e.g. electronics
6. BAckward citations
— a kind of a "reference list"
— reference back to other innovations
— every patent has a unique patent number
— summary of the invention
10. Background t he invention
11. Description of prior art
— what is driving the patent?
— listed towards the end
— list of what is actually protected in the patent
— only what is in the claims is protected by the patent
Different types of patent searches and analysis purposes
1. validity search
—> find prior art which individually or collectively will affect the validity of a pending or granted patent
2. Patentability search
—> find prior art which individually or collectively will affect the patentability of an innovation
3. Freedom to operate or clearance search
—> find force patents which individually could be infringed by a product/technology
4. Patent landscape search
— For learning and decision-making support
— More to determine trends, surroundings, leading actors etc.
— Good starting point
Patent search strategies: different ways of conducting patent searches
1. Keyword search
— structure, function, utiliticy etc
— risk of getting a "blurry search"
2. Assignee search
— to see what a company
3. Classification search
— can be very useful when you know what technology area you're looking for
— good as a startingpoint during search
4. Citation search
— a way to find other relevant areas.
Searching for patent information
1. Plan your search
2. Set the scopes with boundaries and goals of the search
— Define search strategies to get relevant data (keyword search or assignee search? etc)
— Execute searches to collect and sort relevant data
5. Analyze collected an sorted data to reach goals
Setting the scope
1. what context will be the basis of your search?
2. what questions will you answer in relation to the context?
3. What questions are feasible to answer?
sticking to scope?
1. when do you stop?
2. why do you stop?
Designing the patent search: combining search strategies
1. Identify relevant classes
— Conduct initial search to find relevant patents and extract IPCs/CPC:s OR
— keyword searching/ browsing relevant IPCs/CPCs
2. Identify relevant assignees
— Conduct initial search to find relevant patents and extract assignees
— identify relevant assignees from e.g. market analysis
3. Identify relevant keywords
— find keywords for limiting result set
Different classifications systems?
— used in the US
— uses several methods to classify
— used world wide i.e. large coverage
— Different versions available
— widest search
— launched in 2013
— a common internationally compatible classification system
— extension of IPC bur more precise
— created by EPO and USPTO, based on ECLA
What system to choose?
1. focus on IPC and CPC in Esp@cenet
2. There are US-to-CPC converters online if you have the code
Potential pitfalls in relations to classification searches
Don't be to narrow when considering the patent classifications
—> the same patent/ patent family can have different classifications
—> don't rely on one patent class
Idenfify relevant assignees?
Sources for findning relevant assignees:
1. reviewing small set of relevant patents found from initial search
2. market and research field analysis
3. actors mentioned by interviewees
How to think about in terms of assignees?
1. investigate possible nme changes
2. subsidaries and jpint ventures
3. acquisitions and divestments
Process of finding relevant keywords?
1. Question regarding subject matter
— what problem does the invention solve? (utility)
— what is the invention? (structure)
— what does the invention do? (technical functions)
2. Answer to subject matter questions: E.G:
— high-speed police chases are dangerous to society
— a control module, a transmitter, a receiver and at least one switch
— Remotely disables a car in motion by cutting off the fuel supply and ignition
3. keywords definitions from answers
— Police, cop, law enforces, chase, pursuit
— control, module, transmitter, transceiver, receiver, switch, relay
— remote, disable, car, vehicle, cutting, discon, fuel, gas, ignition
building queries using operators?
1. USE boolean operators
2. USE parenthesis
—> avoid too many parenthesis
3. use proximity operators (more soft than the boolean operators e.g. which is not so specific)
— near (near5 is 5 words apart)
4. USE truncation operators
— ?, * osv
— use asteerix at the end when searching for class if unsure of the ending of the class, which is very difficult to know
EXAMPLE SEARCH STRING
(Police OR COP) AND (chase OR purse*) AND (remote* SAME disable*) SAME ((cut* OR discon*) NEAR5 (fuel OR petrol OR gas OR ignition))
How do you search effectively?
1. proper documentation
— create document to capture findings
— allign structure to the questions of your analysis
2. save the analysis for the analysis stage
— avoid analyzing what you're seeing when you do it, just finish your search
3. when to take a step back in the process?
— if you can't find anything remotely similar
— if results are too many
what parts of the patents are appropriate to read?
—> find potentially relevant docmens
—> get a general sense of relevance
3. Look at description: (not too much)
—> it reveals full detail about relevance
—> ultimately determine scope relevance
—> assist in interpreting relevance
Usually nooooo need of reading everything. focus on:
—> background/ prior art
—> summary of invention
investigate relevant patents closely - check file history
—> US Public PAIR
— EPO Register
Tools for patent search
—> easy to use
—> multiple countries
—> some data export functions
—> keyword limitation
—> EPO Register is a powerful resource for detailed analysis
—> Only US patents
—> limited data export functionality
—> USPTO PAIR and patent assignment are very useful resource for detailed analyses
3. Google patents
—> quick and easy tool
—> not as structured or the other alternatives
—> no data export
4. Derwent innovation index
—> the most professional tool
—> most analysis rich tool
Also check out patent inspiration, intellogist, cluster pat, patexia
Tips for setting the scope?
1. Devide scope into separate searches
2. Start with a limited scope and expand
3. Capture the scope and goals in writing — reality check and checklist
Strategy for finding suitable classes?
1. Review a small set of related patents for suitable classes
2. Using commercial search tools, make an initial broad search and determine "Top IPC"
3. Look at what classes/keywords the examiner searched for in the search report of related patents
— US Public PAIR
— EPO Register
4. Keyword searching in the classification index
Tips for finding relevant assignees?
1. Assignee changes: USTPO PAIR and EPO Register
2. Subsidiaries: 10-K filings and annual reports
3. Co-assignees and citations are usually interesting to look at