Training slides for a PCAARRD-organized training on Invention Spotting, Patent Search, Documentation and Interpretation, 18 December 2012. Special thanks to fellow Patent Agent Mr. Noel A. Catibog, Dr. Melvin B. Carlos, and Exec. Director Patricio S. Faylon, for the invitation.
1. Invention Spotting
Caezar Angelito E. Arceo
Registered Patent Agent in the Philippines
(Non-chemical field, 2006; Chemical field, 2007)
Mentor, Patent Agent Qualifying Examinations 2011, 2012
Incorporator, Association of PAQE Professionals, Inc.
Training on Invention Spotting, Patent Search, Documentation and Interpretation
Philippine Council for Agriculture, Aquatic, and Natural Resources Research and Development (PCAARRD)
Bulwagang Panday Karunungan, PCAARRD, Los Baños, Laguna (Philippines)
18 December 2012
2. Outline
1.0 Why invention spotting? 4 min
2.0 How to spot the invention? 10 min
3.0 Exercises 45 min
4.0 End 1 min / Free
3. 1.0 Why invention spotting?
1.1 Why is there a need to spot the invention?
4. 1.1 Why is there a need to spot the invention?
(1) Because you need to.
It gives justice to your prior art search.
It enables you to identify the novel features of your research.
It justifies your research funding.
(2) Because you have to.
It enables you to file a patent application.
Remember: An invention can only be considered an invention if it is patented.
5. 2.0 How to spot the invention?
2.1 What is the invention?
2.2 How to spot an invention?
6. 2.1 What is the invention?
(1) What is the closest prior art?
(2) What are the differences between the closest prior art and the
invention that you can spot?
(3) What are the technical effects of the differences identified?
(4) Which specific difference has the technical effect that seems to be
the most important one?
- PAQE training manual
7. 2.2 How to spot an invention?
(1) Find a sole new feature.
(2) Find a new combination of known features.
(3) Identify what problem did the inventor intend to solve and what
problem he did objectively solve.
(4) Look for the trick of the invention.
- PAQE training manual
15. Exercise 6
CHOSEN
PRIOR ART
1
Preamble?
1. A means of transportation...
INVENTION
Characterizing portion?
...characterized in that the movement is
accomplished by a wheel.
...whereas said transportation is
powered by an engine.
16. Exercise 6
CHOSEN PRIOR ART
2
Preamble?
1. A means of transportation
comprising a suitable carriage body,
INVENTION wheel...[etc etc]
Characterizing portion?
...characterized in that the said carriage
body further comprising a steering
mechanism.
...whereas said transportation is
powered by an engine.
17. Exercise 6
CHOSEN PRIOR ART
3
X
INVENTION
Preamble?
Characterizing portion?
X
Not a prior art!
18. CHOSEN PRIOR ART
Exercise 6
4
Preamble?
1. A means of transportation...
1. A non-animal means of transportation...
1. A locomotive...
...comprising an engine, a propelling
INVENTION wheel, a suitable carriage body, steering
mechanism [etc etc]
Characterizing portion?
...characterized in that liquid gas enables
the operation of the said engine.