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


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The presentation provides quick answers to general questions (What, Why, How, When, Which) about prior-art searches. The presentation also goes in certain of details of specific prior art search types …

The presentation provides quick answers to general questions (What, Why, How, When, Which) about prior-art searches. The presentation also goes in certain of details of specific prior art search types including FTO, patentability, invalidity and state-of-the-art searches. Please visit our website: for details

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  • 1. Your INSIGHT into IP Certificate Course Intellectual Property Rights & IP Services Session Title Prior Art Searches - Overview Trainer Tarun Kumar Bansal Director, Sagacious Research Wednesday, July 15, 2009
  • 2. Presentation Plan “Prior-Art ” “ P r i o r - A r t S e a rc h ” – W h a t ? W hy ? W h e n ? W h i c h ? H o w ? M o re o n “ S e a rc h S t ra te g i e s ” “ F re e d o m - to - O p e ra te ” S e a rc h “ Pa te n ta b i l i t y ” S e a rc h “ I n v a l i d i t y ” S e a rc h “ S t a te - o f - t h e - A r t ” S e a rc h M o re o n “ D a t a b a s e s ” S e a rc h Re p o r t S t r u c t u re Case Studies July 15, 2009 Slide 2
  • 3. “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 References Acceptable as “Prior-Art” in Patent Cases - 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 References “NOT” Acceptable as “Prior-Art” in Patent Cases Non-public information like unpublished scientific papers, provisional applications, etc Any information known and meant for only a particular group of people like trade secret, documents for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 July 15, 2009 Slide 3
  • 4. “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 July 15, 2009 Slide 4
  • 5. “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 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) July 15, 2009 Slide 5
  • 6. “Prior-Art Search” – When & Which??? 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 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 Invalidity/ Validity Search Involved in a Litigation concerning IP In the Middle of Innovating Design Around Searches Facing a Stumbling Block Planning to Innovate State-of-the-art Searches Planning Business Expansion IP Landscape Studies Planning a Business Strategy July 15, 2009 Slide 6
  • 7. “Prior-Art Search” – How??? Prior-Art Search: General Steps Understanding the Search Subject Identifying Key-Features Identifying Term Sets Developing Search Strategy & Conducting Search Screening & Analysis Presentation of Results July 15, 2009 Slide 7
  • 8. More on Search Strategies 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 concept search uses the relationship and structure between different elements or method steps to find relevant prior art Author/ 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 July 15, 2009 Slide 8
  • 9. FTO Search – How??? (1/2) 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) - 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 July 15, 2009 Slide 9
  • 10. FTO Search – How??? (2/2) 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: - 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) <in> Claim, Title, Abstract AND Term Set 2 <in> 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 July 15, 2009 Slide 10
  • 11. Patentability Search – How??? (1/2) 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)… 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 July 15, 2009 Slide 11
  • 12. Patentability Search – How??? (2/2) 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 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 July 15, 2009 Slide 12
  • 13. Invalidity Search – How??? 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: - 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. July 15, 2009 Slide 13
  • 14. 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., -Identifying preservatives for a composition containing compound ‘X’ -Understanding the entire landscape of Mint based Mouth Fresheners Key-Features: Here key-features are replaced with the expected output and accordingly a framework for capturing 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 July 15, 2009 Slide 14
  • 15. 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 Non-Patent Search Yes Yes No Jurisdiction Restrictions No No Yes Dates Restrictions Generally No Yes No Degree of Moderate High Thorough Comprehensiveness Desired Best Suited Search Keyword + Keyword + Spider + Keyword + Others Strategies Others Inventor/Assignee July 15, 2009 Slide 15
  • 16. More on Databases Patent databases Non- Patent databases – MicroPatent – ACM – Thomson Innovation – IEEE – Delphion – Google Scholar – USPTO patent database/ eSpacenet – SAE – Sequence and Structure databases via – Pub Med STN – Scirus – GenomeQuest – Science Direct – Derwent World Patent Index – Thomson Innovation – Patent Café * – GenBank – AUSPAT – PatBase July 15, 2009 Slide 16
  • 17. Search Report Structure 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) 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… July 15, 2009 Slide 17
  • 18. Case Study 1 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? - What Additional Information may be Desired from the manufacturers - Key Features for the Search - Term Sets and Key Features July 15, 2009 Slide 18
  • 19. Case Study 2 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: 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 July 15, 2009 Slide 19
  • 20. Your INSIGHT into IP Thank You Sagacious Research LLC Sagacious Research Pvt Ltd 13221 Tobiasson Road A06, IIIrd Floor, Palam Vyapar Kendra, Poway, CA 92064 Palam Vihar, Gurgaon - 122 007 USA India Tel: +1 360 393 5457 Tel: +91 124 403 4927, +91 931 387 2266 Fax: +1 360 393 5457 Fax: +91 124 403 3431 Email: Email: