Patent searching. Jeremy Holmes IP Counsel & Due Diligence Manager Imperial Innovations

Transcription

1 Patent searching Jeremy Holmes IP Counsel & Due Diligence Manager Imperial Innovations

2 Patent searching

3 Patent searching During the workshop you will: practice searching patent databases learn the difference between performing different types of patent searches: in preparation for filing your own patent to determine whether you have freedom to operate learn how to interpret the results from a patent search: finding out the stage of an application navigating the front page understanding the difference between the inventor and assignee locating and interpreting the patent claims understanding patent families and priority dates

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5 Basics on patents Stops others from copying what you re doing Negative ( monopoly ) right Limited lifetime (20 years) Not everything can be patented Must be new Must be clever

6 Why search? Prior art Relevant to viability of future IP Exact disclosure relevant to novelty Partial disclosure relevant to inventive step Freedom to operate (FTO) relevant to ability to commercialise General background

7 How? Yourself Search engine Free (Google, Espace) Subscribe (Patbase, Thompson) External searcher General (cheap) General (expensive) Specialised Patent offices

8 Cost? In house Databases just cost time Subscribed databases annual charge External searchers Cost per search Annual fee for max number of searches

9 Then what? Results need analysing and assessing Searchers will often not do this Need scientific input Need legal input (status, claim scope) Final opinion (FTO) needs patent attorney

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11 Patent documents general points Patent documents comprise three main parts - Title page - Description - Claims Title page usually most useful Title/abstract Publication date Assignees Inventors Stage of application

12 Patent documents general points PCT publication

13 Patent documents general points EP publication

14 US publication

15 Search mechanics (1) Write a short definition of the invention Highlight key words Prioritise the clever parts (ask the inventor!) Start with a simple key word search

16 Example 1: Epidural catheter Invention: Epidural catheter High demand for devices and procedures to administer anaesthetic agents/medication to patients before surgery and during healing Problem: How can the doctor control position and movement of the catheter tip, i.e. how to steer the catheter? Hot topic, how to search for what devices/methods are out there already?

17 Example One keyword lots of hits A few keywords, still a lot of hits A lot of keywords, very few hits, but have you missed something? Golden rule write down each search string!!

18 Example 1: Epidural catheter epidural catheter : About 256,000 results Advanced Patent Search

19 Search mechanics (2) Refining the search Don t panic at getting a lot of hits Scan a few documents to see why they were included Where do the key words occur close to each other? Think more descriptively key words too braod? How much of each patent do you search? Title? Title & abstract? Title abstract claims? Whole patent?

20 Search mechanics (3) Further refinement Combinations of key words Word equivalents Other fields: Inventor(s) Assignees/owners Classification codes

21 Example 1: Epidural catheter Search hit epidural catheter; steer : 18,200 results Bibliographic information

22 Example 1: Epidural catheter Search hit Steerable catheter Seeking protection for a method of location-specific drug delivery ( method claim ) Seeking protection for a method of making said catheter ( method claim )

23 Example 1: Epidural catheter Search stearing Steer epidural catheter drug delivery

24 Example 1: Epidural catheter Search string Steer epidural catheter drug delivery Using combinations of features such as filing date in between year X and year Y in Europe only to arrive at ~21 hits)

25 Processing the results Generally Patent families helps you group results together Find a document in English Don t discard too quickly Prior art: isolated example in an apparently unrelated document FTO: check the claims, not just the abstract!

26 Example 2: Surgical robot Invention: New idea for a surgical robot specific for brain surgery High demand for R & D in this field Need to keep up-to-date with IP Problem: What is out there already concerning surgical robots in the field of brain surgery? Set of searches on Google Patents

27 Example 2: Surgical robot Search string 1 Surgical robot : About 345,000 results Bibliographic information Apparatus claim

28 Example 2: Surgical robot Surgical robot system and method of operating the same

29 Example 2: Surgical robot Seeking to protect a method of operating surgical robot for a single port surgery ( Method claim )

30 Example 2: Surgical robot Search string Surgical robot neurosurgery, filings in EP between July 2005-July 2014 ~34 results

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32 Probing the patent document further Look at full document Exact content/examples relevant to novelty Date of publication General Teaching relevant to inventive step

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34 Freedom to Operate ( FTO ) Looking at other people s patents Are they a barrier to you? Look at them as a potential weapon Date of filing (rule out anything more than 20 years old) Status the patent must be: granted*; in force ; and, in a country of interest Look at the claims (independent claims) [*If not yet granted, still need to review and keep on watch ]

35 Claim analysis Identify independent claims Identify claim type (product, process, method/use) Look at product claims first, then method/process/use ones Break claim down into bullet points of technical features Break down your invention similarly Compare the two lists and look for missing features in your invention Complete match = infringement!!

36 Key independent claims are: 1, 7, 8, 9, 10, 11, 12

37 Device Semiconductor substrate Insulating layer Semiconducting layer Sensing area Membrane Gas sensitive layers heater

38 Ways forward if infringing Stop! Design around (look at omitting or changing a technical feature) Consider a licence Try and invalidate (find prior art or squeeze argument).

39 Appendix

40 Priority Application First patent application to be filed (normally in the country of residence of the applicant) Right to file patent application for the SAME invention elsewhere* within 1 year Anything published in this period does not count against the patent Priority application and applications referring thereto form a patent family *: any other country of the Paris Convention

41 International Patent Application (PCT) Claims priority from the priority application Entry into national/regional phases (requires large efforts wrt to drafting, prosecution and maintenance)

42 Timeline of patent filing t (months) National filing (Priority) PCT application (filing date) International Search Report (ISR) CN US EP JP International publication National Phase entry (applications in selected countries)

43 Patent vs patent application Published patent application: A in the publication number, i.e. Published patent: B in the publication number, i.e.

44 Different types of A A1: Application is published with the Search Report on the prior art A2: Publication does not contain the Search Report A3: Separate publication of the Search Report -> Memo: A1=A2+A3!

45 Search Report Prior art of relevance to the patent claims (according to the Examiner!) Listen documents have different classification codes - X : Considered to have already disclosed features of the claims (novelty) - Y : Relevant for how non-obvious features of the claims are (More of a chance to argue with the Examiner!) Rule of thumb: More than five 5 X documents is usually a bad sign!

46 Divisionals and continuations Inventors often want more than one invention covered In most jurisdictions: One invention per application* -> Separate application to be filed for the other inventions In US: Continuation applications: Applicant tries to claim the same invention as in the original application but in a different way (for instance: product claim in the first filing, a method claim in the continuation) * Key word: Unity of invention (complex topic!)