Patentability StudyFTOTech. SurveyDefensive Publ. Copyright © KATZAROV S.A.20/02/2007 Harnessing Patent Information for Enterprise Competitiveness Olivier

Patentability Study FTO Tech. Survey Defensive Publ.

Copyright © KATZAROV S.A. 20/02/2007

Harnessing Patent Information for

Enterprise Competitiveness

Olivier Sacroug

European Patent AttorneyKatzarov SA



• Information in the world of IP

– Patent information– Scientific publications– Marketing information



• What is patent information?– published patent applications– published search reports– granted patents– published decisions– gazettes of patent offices



• Why is patent information important?– Almost 1’000’000 new patent documents

published every year over the last 10 years– 50’000’000 patent documents worldwide,

describing 15’000’000 inventions– Exceptional source of technological

information



• Patent information is:– up-to-date– uniformly structured– unique– well organized– concentrated– quickly and easily accessed– inexpensive



• Patent information is important for– large companies– small and medium enterprises– scientists and researchers– inventors– investors– patent attorneys, patent searchers– ...



• How to conduct searches– mandate an external provider:

• patent search service provider• patent firm• patent offices

– hire a specialist (patent agent, searcher)– search online (ep.espacenet.com)



• How to retrieve patent information– use cited references– use patent classification (IPC, EPC)– use key words– use filing numbers– use bibliographic data (applicant, inventors)– combining the above



• Different uses of patent information

– Patentability studies– Freedom to operate studies (FTO)– Technology surveys– Defensive publications



• Patentability study

– Can I get a patent for my invention?



• Freedom to operate study

– Can I market my invention?



• Technology Survey

– What do the others do?



• Defensive publication

– How can I prevent third parties from patenting something?

Patentability Study


FTO Tech. Survey Defensive Publ.

• Patentability study: why?

– To evaluate the chances of obtaining a patent for a determined invention / development

– To help writing a better patent application– To avoid unnecessary costs of preparing and

filing a useless patent application

Patentability Study



• Patentability study: when?

– Once a solution is defined– Before filing a patent application

Patentability Study



• Patentability study: what?

– Any publication (patent or non-patent documents)

Patentability Study



• Patentability study: how?– Look for the core features of the invention

(the special case destroys the novelty of the general case)

– Limited scope (often limited to a predefined budget)

– Stops as soon as the invention is anticipated by one or more documents

Patentability Study



• Patentability study: result

– Limited set of documents– Recommendations about the patenting

strategy

Patentability Study



• Patentability study: actions

+ File a patent application to protect your invention

+/- Adapt / limit the scope of protection to a part of your invention only

- Give up any patent protection

FTO


Patentability Study Tech. Survey Defensive Publ.

• Freedom to operate study: why?

– Avoid being attacked for infringement by one or more competitors

– Identify necessary licenses

FTO



• Freedom to operate study: when?

– Before starting a new development– Just before going to market: usually too late

FTO



• Freedom to operate study: what?

– Granted and valid patents– Patent applications

FTO



• Freedom to operate study: how?

– Extensive search– Look for broad patents– Patent family and validity searches– Carefully analyse patent claims– “Old” patents are disregarded (> 20 years)

FTO



• Freedom to operate study: result– One or more patent families with legal status,

time and geographical limits of each patent– Identification of possible infringements– Identification of possible licensors– Risk assessment

FTO



• Freedom to operate study: actions

+ continue the development as planned

+/- modify the solution

+/- accept the risks

- negotiate licenses

- abandon, change direction

Tech. Survey


Patentability Study FTO Defensive Publ.

• Technology Survey: why?– Understand what is occurring in your (future)

technological area:• technological trends• subjects of research• emerging research fields

– Avoid reinventing the wheels• find existing solutions to a technical problem• find solutions that are not yet protected

Tech. Survey



• Technology Survey: why?– Watch your competitors

• key players• patent portfolios• technical strategies

– Survey third parties patents• patenting trends• threats• infringements

Tech. Survey



• Technology Survey: when?

– Before entering a new field– Continuously (usually starts after the first bad

experience)

Tech. Survey



• Technology Survey: what?

– Patent documents– Scientific publications, newspapers, journals– Marketing information– Company publication– ...

Tech. Survey



• Technology Survey: how?

– Search script / strategy• Defined once• Periodically run• Continuously adapted

– Embrace all documentation found– Analyse

Tech. Survey



• Technology Survey: results

– Patent documents– Statistics:

• per country / region• per company / inventor• per patent classification• per year

Tech. Survey



• Why do I need statistics

– Country / region: markets of interest– Company: cooperating companies– Inventor: top inventors in a company– Classification: R&D focus– Year: old or emerging technological field

Tech. Survey



• Technology Survey: actions

– Oppose your competitors new patents– Adapt your R&D, marketing, investing and/or

business strategies– Assess your strategy regarding new activities

Defensive Publ.


Patentability Study FTO Tech. Survey

• Defensive publication: why?

– Prevent a third party from patenting something

Defensive Publ.



• Defensive publication: how?

– Publish discretely• Publish through specialized companies• File a patent application in an “exotic” country

Defensive Publ.



• Defensive publication: result

– Published document with a certified publication date

Defensive Publ.



• Defensive publication: action

– If necessary, use your defensive publication to destroy novelty of a competitor’s patent



• Conclusion:

– Harnessing information, in particular patent information, is essential to the establishment of a coherent and efficient business strategy and to avoid disputes with competitors.

– Leads to greater earnings.



Questions?



Olivier Sacroug

Katzarov SAEuropean Patent & Trademark Attorneys

Geneva and Basel

[email protected]: +41 22 342 66 30Fax: +41 22 342 66 15

www.katzarov.com

Thank You!

Documents

Patentability StudyFTOTech. SurveyDefensive Publ. Copyright © KATZAROV S.A.20/02/2007 Harnessing Patent Information for Enterprise Competitiveness Olivier