A lot of new ideas are created or born but, quoting Brandt (2002), “Most die a lonely death, never seeing the light of commercial success. ” Every Research… ENDS WITH BEGINS WITH NOVEL SUCESSFUL IDEA/CONCEPT EXPERIENCE
Need to patent your invention? 1 2 3 4 FILE AN NOVEL PATENT PATENT PATENT INVENTION SEARCH DRAFT APPLICATION
Why search Patent Literature? ✓ The Information contained in existing patent documents (patent information) plays an important role in the conception, screening and development of an idea. Such information can provide useful insight into whether an idea is new or not (state-of-the art) and whether to proceed further in developing an idea. With nearly 3 million patent applications being published annually around the globe, of which an estimated 70 percent of the information in patent documents is not available elsewhere they offer a wealth of information, such as information on the state-of-the-art, which can help an enterprise to avoid wasting resources - WIPO
Basic Structure of Patent 03 CLAIMS Aspects to 04 01 claim/monopolize DRAWINGS ABSTRACT Image that best Crux of the represents your invention invention 02 DESCRIPTION Brief description of the invention
Description/Specification • Technical Field • Background • Description of Prior Art • Summary or Brief Description • Object of the Invention • Detailed Description • Examples • Drawings Description
Claims • Sequentially Numbered • Define Scope of Patent • Range from broad to narrow • Products/ Articles/ System, Product by Process, Compositions, Methods of making, Methods of using…
Tools for Patent Search Others Keyword Number Classification E.g., Country, Search Search Search date etc. Other useful links
Searching Effective searching requires a good search strategy • Keyword Search • Classification Search • Appropriate Field (s) • Must contain appropriate terms for capturing references • Take into account all possible variations of inventions • Including other uses • Combinations of compositions etc. 10
Search Fields Priority Date Filing Date Publication Date Abstract of the invention Issue / Grant Date Classification Country Title Abstract Date International Classification Country of an application Title of the invention Cooperative Classification
Search Fields … Application number Name of the assignee Patent Inventor number Citations Applicant Application Number Granted application number Name of the inventor Citing and cited documents
Specialized Searches Chemistry & Biochemistry/ Biotechnology Fields
Chemical Structures https://www.surechembl.org/search// Systematic Name Trade Names Registry Number Chemical Structure G x R 1
Sequences https://www.lens.org/lens/bio/patseqexplorer#pse/homo_sapiens/latest Peptides Nucleotides
Citations • Backward Citations • All references cited in a patent • Includes references cited by applicant and examiner • Useful in assessing strength of patent over cited art • Forward Citations • All references citing a patent • Useful in assessing strength of patent • Generally, breakthrough patents are referred to very often • Citations are used to pick up patents that might otherwise be missed
Types of Analyses Use of search results for different purposes
Prior Art • Anything that is known, described, used or sold is considered prior art • May be in any tangible or intangible form • Printed or written matter • Trade shows • Brochures • Patents • Open literature • … • Recorded format • CDs • Cassettes • …
Patentability • Done to assess novelty and obviousness (inventiveness) of invention over all prior art • Industrial Applicability is generally not within the purview of such a search • Neither is patentable subject matter looked at • Prior art includes patents and non patent literature • An ongoing search that should be done regularly until a patent application is filed • Novelty assessment is a lower form where only NOVELTY is assessed
Opposition/ Invalidation • Administrative process available under the law of many jurisdictions which allows third parties to formally challenge the validity of patents • 2 types: • Pre-grant opposition when a pending patent application is opposed • Post grant opposition when a granted patent is opposed • Search can encompass ALL kinds of literature • Date of the document HAS to pre-date the priority date of the patent application/ granted patent
FTO/FTP • An assurance that any commercial use of a product or a process will NOT violate the rights of a patent holder • Rights of a patent holder determined by whatever is in the CLAIMS section of the patent • Search is limited to patent literature necessarily • Preferably search in the claims section • Database chosen accordingly
Landscapes • Technology trends • Provides the direction in which technology is moving towards (e.g. Materials used as filaments in light bulbs) • Useful for predicting next generation products and processes • Also can predict maturation of technology • Competitive landscape • Provides a competitors’ direction in a technical field • Used for predictive purposes as well • Enables strategizing of business/research program • Chronological trends • Provides direction a technology is headed (e.g. Light bulb over the years) • Similar to technology trend
Who benefits from Patent search? • An inventor: Prior art awareness, avoid replication • A researcher: analyze new and pending patents to understand present trends • A company: Avoid infringement, assess competitors actions, exposed to technical information • An Entrepreneur: Identify new market that can be ventured by assessing competitors • Students and educators: Learn about latest developments in all industries • General public: To be aware of developments in all works of life
Types of patent applications
Provisional Application Temporary application which is filed when the invention is not finalized and is still under experimentation. Advantages of filing a provisional application Applicant gets 12 months’ time to fully develop the invention and ascertain its market potential Helps to establish “priority” right over the invention Enables the applicant to use the term "patent pending” on their product Less expensive to prepare and file the application Enables the applicant to file International applications and claim priority within 12 months.
Ordinary Application OR Non-Provisional Application • An application for patent filed in the Patent Office without claiming any priority of application made in a convention country or without any reference to any other application under process in the office. • An ordinary application must be accompanied with a complete specification and claims.
Convention Application • An application for patent filed in the Patent Office, claiming a priority date based on the same or substantially similar application filed in one or more of the convention countries. • In order to get convention status, an applicant should file the application in the Indian Patent Office within 12 months from the date of first filing of a similar application in the convention country.
PCT International Application An international application governed by the Patent Cooperation Treaty, and can be validated in up to 142 countries. Advantages of filing a PCT Application A single international patent application can be filed in order to seek protection for an invention in up to 142 countries throughout the world. The priority date obtained by filing a PCT application is internationally recognized, and has an effect in each of the countries designated. It gives the application 30/31 months to enter into various countries from the international filing date or the priority date, and therefore gives the applicant more time to assess the viability of the invention.
PCT National Phase Application • When an international application is made according to PCT designating India • An applicant can file the national phase application in India within 31 months from the international filing date or the priority date (whichever is earlier).
Patent of Addition When an applicant feels that he has come across an invention which is a slight modification of the invention for which he has already applied for or has obtained patent, the applicant can go for patent of addition if the invention does not involve a substantial inventive step. There is no need to pay separate renewal fee for the patent of addition during the term of the main patent and it expires along with the main patent.
Divisional Application When an application made by applicant claims more than one invention, the applicant on his own or to meet the official objection may divide the application and file two or more applications, as applicable for each of the inventions. This type of application, divided out of the parent one, is called a Divisional Application. The priority date for all the divisional applications will be same as that claimed by the Parent Application.
Types of patent specifications
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