overview: prior art searches (fto, patentability, invalidity, & others) by sagacious research

8/14/2019 Overview: Prior Art Searches (FTO, Patentability, Invalidity, & Others) by Sagacious Research

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Y o u r I N S I G H T i n t o I P

Session Title

Certificate Course

Intellectual Property Rights & IP Services

Prior Art Searches - Overview

Wednesday, July 15, 2009

Trainer

Tarun Kumar BansalDirector, Sagacious Research


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Presentation Plan

Pr ior -Art

Pr ior -Art Search What? Why? When? Which? How?

More on Search Strateg ies

Freedom-to-Operate Search

July 15, 2009

Patentab i l i ty Search

Inva l id ity Search

State-of - the-Art Search

More on Databases

Search Report S tructure

Case Stud ies

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Prior-Art

What is Prior Art?

- Combination of two words Prior + Art meaning earlier/existing knowledge

- Anything that was publicly known and could have contributed towards the making of a so called invention

Invention is valid and may be patentable only if it is different from the prior art and is not an obvious derivation

of the prior art, i.e., there was some involvement of human intelligence in making of the invention

July 15, 2009

-

- Any publicly published document like Patents, Scientific Paper, Books, Conference Proceedings, News clipping,

Blog Entry, Comic Book, Fiction

- Oral Disclosures (that are available and have been validated for the date of creation)

- Traditional Knowledge??

References NOT Acceptable as Prior-Art in Patent Cases

Non-public information like unpublished scientific papers, provisional applications, etc

Any information known and meant for only a particular group of people like trade secret, documents for internal

circulation within a company, etc

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Prior-Art Search What??

What is Prior Art Search?

- An effort to identify Prior-Art references relevant in a particular context. May include:

- Search on Patent/ Non-Patent Databases

- General Internet Search for News Items, Articles, blogs and Other References

- Identifying and Consulting experts in the fields

- Physical search in a yet-to-be-digitized library

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Prior-Art Search Why???

Why Conduct Prior-Art Search?

Legal Intelligence

- Be sure if a particular product is free of any IPR and related legal issues

- Be sure if an Innovation? is worth patenting and if it will swift through the prosecution

- Know when to fight and when to surrender if a competitor asserts a patent against you

July 15, 2009

Technical Intelligence

- Be sure that you are not re-inventing the wheel

- Identify solutions to your technical problems

- Identify alternative approaches to achieve a given goal

Business Intelligence

- Know and track what competitors are up to

- Keep a track of opportunities (and threats)

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Types of Prior-Art Search

- Patentability Searches

- Invalidity/ Validity Searches

- Freedom-to-Operate Searches

- State-of-the-Art Searches/ IP Landscape Analysis/ Design Around Searches

Prior-Art Search When & Which

Prior-Art Search When & Which???

July 15, 2009

Activity/ Situation (When) Prior-Art Search (Which)Thought you Innovated Something Patentability Search

Planning/ Completed a Product Launch Freedom-to-Operate Search

Accused of Patent Infringement

Plan to License a Patent

Involved in a Litigation concerning IP

Invalidity/ Validity Search

In the Middle of Innovating

Facing a Stumbling BlockDesign Around Searches

Planning to Innovate

Planning Business Expansion

Planning a Business Strategy

State-of-the-art Searches

IP Landscape Studies

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Prior-Art Search: General Steps

Understanding the Search Subject

Identifying Key-Features

Prior-Art Search How???

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Identifying Term Sets

Developing Search Strategy & Conducting Search

Screening & Analysis

Presentation of Results

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Keyword-based search

- Uses various keywords describing the invention/patent/ Product key-features combined with Boolean,

proximity and other specialized operators (wildcards)

Patent-Class-based search

- Uses IPC class (or jurisdiction specific class) restriction to make the searches more focused and directed.

Concept Based Search

- A conce t search uses the relationshi and structure between different elements or method ste s to

More on Search Strategies

July 15, 2009

find relevant prior artAuthor/ Inventor-name and Assignee-name Based search

- Conducted to identify patents associated with inventors/authors/assignees who are working actively in

the domain of interest/invention/patent to be invalidated.

Citation Analysis / Spider search

- Forward>Backward AND Backward>Forward Citation analysis to identify relevant patents in the same

technology timeline and scope. Most useful in the case of validity/invalidity searches

Bio-sequence/ Chemical structure Searches

- In cases where a bio-sequences and/or chemical structure is involved, it is empirical to use bio-

sequence and chemical structure searches on various databases

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Search Subject: A product/Service

E.g., A new drug composition for treatment of cancer comprising compound X as the key ingredient

(therapeutic agent) along with compound Y as a preservative and compound Z as a filler

Key-Features: Components/Elements of a product, Steps of a method

E.g,

- Patents broadly claiming compositions comprising X or X + Y or X + Z or X + Y + Z for any application

or for cancer

FTO Search How??? (1/2)

July 15, 2009

- Patents broadly claiming method of treating cancer using X (or a composition comprising X)

- Patent having compound claim for X

- Patents broadly claiming use of Y as a preservative

- Patents broadly claiming use of Z as a filler

If there are additional specifications for the product like the drug is formulated as nano-particles, then we

additionally need to see if there are any patents claiming nano-particles formulations of X, etc

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Term Sets:

Consider the key feature Patents broadly claiming method of treating cancer using X (or a composition

comprising X) and identify important keywords:

- Treatment/Composition (Term Set 1)

- cancer (Term Set 2)

- X (Term Set 3)

Search Strategy:

FTO Search How??? (2/2)

July 15, 2009

- Will be a combination of terms sets for various key features

- Focused on identifying only active (and pending) patents in the relevant jurisdiction

- Focused on Sections under the Scope of Claims

- No restriction on dates (to optimize search, depending on domain, you can restrict to patents filed only in

last ~25 years as patents filed before this would have expired)

E.g., for searching patents related to above key-feature we might consider following strategy:(Term Set 1 AND Term Set 3) Claim, Title, Abstract AND Term Set 2 Full Text

Analysis:

- Mainly Focused on Mapping claims of patents identified from the search on to the product key-features

- Depending on the results may also hint towards design around options

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Search Subject: An Invention

E.g., A new treatment for hypertension using a mixture of Extract from Acacia (A Catechin) + Extract from

Scutelleria (A Flavanoid)

Key-Features: Key Novelty Aspects derived from the description of the Invention

E.g, in this invention, we can identify key features of varying scope as follows (from Narrow to Broad):

- Mixture of Acacia + Scutelleria for treatment of Hypertension (or other blood/cardio disorders)

Patentability Search How??? (1/2)

July 15, 2009

If no references for above key-feature Is found We can check for following

- Documents mentioning Use of Mixture of Acacia + Any Flavanoid (or Any Catechin + Scutelleria) for

hypertension (or blood/cardio disorder treatment) AND a document mentioning Scutelleria as a Flavanoid

(or Acacia as a Catechin)

If no references for above key-feature is found We can broaden further to check for following

- Documents mentioning Use of Mixture of Any Catechin + Any Flavanoid for hypertension (or blood/cardio

disorder treatment) AND a document mentioning Scutelleria as a Flavanoid AND a document mentioning

Acacia as a Catechin

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Search Strategy:

- New strategy for each of the above feature (Narrow to Broad)

- Focused on identifying any document (patent/non-patent)

- Focused on Full-text of the Documents

- Focused on documents published before the official date (priority date) of Invention (if any)

- No restriction on Jurisdiction of search, Status of the Patent, etc

Patentability Search How??? (2/2)

July 15, 2009

Analysis:- Mainly Focused on Mapping Documents identified from the search on to the key-features identified

- Depending on the results may also hint towards optimum patent scope

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Essentially Same as Patentability Search, Except for the Following:

Search Subject: A granted Patent

E.g., Patent Number (EP.) + may be a specific Claim 1

Key-Features: Key Novelty Aspects Derived From Clauses of the Claim

Search Strategy:

Invalidity Search How???

July 15, 2009

- Focused on documents published before the priority date of the patent (if any)

- Citations already cited during Prosecution or in previous Oppositions/ Litigations can be used as check

points or source of information for term sets, IPC classes, relevant assignees or inventors, etc.

- Robust Spider Searching using backward citations can be performed

- Search using Inventor/ Assignee names may be useful

Unlike Patentability searches, the invalidity search is much more critical in nature as an entire infringement suit

might depend on it, hence, comprehensiveness is desirable.

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State-of-the-Art Search How???

Essentially there are:

- No pre-defined strategies and/or rules for conducting these searches

- Totally depends on the purpose at hand

Search Subject: Could be a Specific Tech Problem and/or Could be Inputs for a Business Strategy

E.g.,

-Identif in reservatives for a com osition containin com ound X

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-Understanding the entire landscape of Mint based Mouth Fresheners

Key-Features: Here key-features are replaced with the expected output and accordingly a framework forcapturing information (taxonomy) is developed

e.g., While understanding landscape of mint based Mouth fresheners the desired output may include mint

compounds used, their origin (natural/artificial), Source of Natural compounds used, Any Additional

Therapeutic Effects, Major Players, etc

-These information classes becomes part of taxonomy

Analysis:

Patents are analyzed and desired information is captured from the relevant patents

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Quick Comparison

Patentability Invalidity FTO

Search Subject An Invention A Patent A Product/Service

Patent Search Yes Yes Yes

Search Scope Full-Text Full-Text Claims

Legal Status Restrictions None None Active/Pending

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on- atent earc es es o

Jurisdiction Restrictions No No Yes

Dates Restrictions Generally No Yes No

Degree of

Comprehensiveness

Desired

Moderate High Thorough

Best Suited Search

Strategies

Keyword +

Others

Keyword + Spider +

Inventor/Assignee

Keyword + Others

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More on Databases

Patent databases MicroPatent

Thomson Innovation

Delphion USPTO patent database/ eSpacenet

Sequence and Structure databases via

STN

GenomeQuest

Non- Patent databases ACM

IEEE

Google Scholar SAE

Pub Med

Scirus

Science Direct

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Derwent World Patent Index Patent Caf *

AUSPAT

PatBase

Thomson Innovation GenBank

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About the Search

- List of Objective

- Key-Features identified & Corresponding Relevance Criteria

- Term Sets and Search Strategies Used & Corresponding Log

- Databases and Any Other Information Source Used

- Assumptions (If any)

Search Report Structure

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List of Relevant Documents

- Patent Numbers/ Literature Title

- Publication and Other Important Dates

- Mapping/Analysis Details (Textual/Visual)

Additional Details That Can be Added depending on the Search Type- Legal Status and Expiry Dates (FTO Searches/ State-of-the-Art searches)

- Sequence/Structure Details

- Trends and Charts (State-of-the-Art/ Landscape Studies)

It is also advised to include a complete list of documents that were analyzed so as to have a complete record

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Case:

A Bicycle manufacturing firm has identified that cycle riders need to sip water during rides. So, they think of

providing a bottle and a bottle holder attached to the pipe-frame of the cycle.

Questions:

-What could be the IP implications of the bringing such a product in to the market?

-What steps should the manufacturer take to avoid such implications, if any?

-Elaborate the entire process of the patent search required?

Case Study 1

July 15, 2009

- What Additional Information may be Desired from the manufacturers- Key Features for the Search

- Term Sets and Key Features

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Case:

A ball pen manufacturer manufactures a ball pen having a pen body and a cap, such that the cap has a torch

light arrangement. This manufacturer is sued for infringing on a patent US 1,234,567 (Filing Date: June 1, 1995;

Priority Date: June 5, 1994) having the following claims:

A writing apparatus comprising:

an ink portion configured to release ink when contacted on a surface; and

a cap portion configured to at least partially cover the ink portion, the cap portion comprising:

Case Study 2

July 15, 2009

a light emitting portion capable to emit light; and

a trigger portion to trigger the light emitting portion to emit light.

Questions:

-What options does the manufacturer has?

-Elaborate the entire process of the patent search required?

- Key Features for the Search

- Term Sets and Key Features

- Dates for the Search

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Y o u r I N S I G H T i n t o I P

Thank You

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