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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Non-public information like unpublished scientific papers, provisional applications, etc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???
July 15, 2009
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
July 15, 2009
-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
July 15, 2009
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
July 15, 2009
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
July 15, 2009
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
Sagacious Research LLC13221 Tobiasson RoadPoway, CA 92064USATel: +1 360 393 5457Fax: +1 360 393 5457Email: [email protected]
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