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Prior art searches: IntroductionMassimo Barbieri
(Technology Transfer Office) – Politecnico di Milano
E-mail: [email protected]
TTO © 2009 M. Barbieri © 2010
Index
Patent information: a competitive advantage
Tools and methodologies for novelty and inventive step evaluation
TTO © 2009 M. Barbieri © 2010
• patent documentalist • patent attorney (?)• patent examiner (EPO, USPTO, …, UIBM?, etc)
“In a small team, all members need broad technical expertise”
Sources scientific journals (World Patent Information) EPO guidelines EPO training courses (also online) training with experts WON seminars (http://www.won-nl.org/2008/public/en/home.shtml)
Introduction (1)
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PCT
6 months
Patent publication
12 months
Before thesis IT
Internal Legal steps“Istruttoria”
State of the art search
Patentability search
Patentability search
Monitoring
Filing
Patentability search
12 months
When are patent searches carried out?
Introduction (2)
When stop a search ?
• the probability of discovering others relevant documents is very low compared to the effort needed or;
• documents are discovered which doubtlessly demonstrate a violation of patentability requirements
• the probability of discovering others relevant documents is very low compared to the effort needed or;
• documents are discovered which doubtlessly demonstrate a violation of patentability requirements
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First questions for the inventors:
• type of invention = accurate protection
• detailed description of invention
• advantages (compared to state of the art)
• list of keywords
Introduction (3)
TTO © 2009 M. Barbieri © 2010Source: B. Wicenec – Searching the patent space – World Patent Information (2008), vol. 30, pages 153 - 155
The technological
field is defined by one or more
IPC codes
Drawback: only classified documents are found
No restriction with respect to time or country of publication
The temporal dimension of the Patent Space is characterized by the Publication Week of a patent document.
The “Patent space”
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Main types of patent searches:
- patentability, (b) validity and (c) state-of-the-art: high coverage of information (patents + NPL)
(b) Limit the search by date
(c) Statistical analysis + link to full texts + high level of completeness
- Freedom degrees of operation: national source of information + claims + legal status
Source: P. Foglia – Patentability search strategies and the reformed IPC: A patent office perspective – World Patent Information (2007), vol. 29, pages 33 - 53
Types of patent searches
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The search quality (patent information) depends of:• increase number of patent “pending”• increase number of “filings” (above all from Asia) and dimensions (number of pages and claims)• quality of data provided by applicants• accuracy of data loaded in databases
An examiner may improve quality of patent information:- by amending title pr abstract - adding a drawing in the front page- classifying correctly an invention- decreasing backlog [using work done by others and improving efficiency of granting process]
Quality of patent information (1)
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Patent information quality changes during the patent lifecycle [both metadata (title, classification …) both full text]
Quality of patent information (2)
Source: D. Bonino et al. – Review of the state-of-the-art in patent information and forthcoming evolutions in intelligent patent informatics – World Patent Information (2010), vol. 32, page 31
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The “Patent information” is a term that involve:
within a patent
about patent or group of patents
Patent literature is a awesome source of technical and strategic information and represents a necessary complement to the traditional technical literature
Patent information can be:
explicit (i.e. title, inventor, summary,…)
implicit (more difficult to extract from patent documents but much more valuable to the innovation process; i.e. number of patents owned by the same applicant, the quality of patent portfolio, industry trends and so forth)
Patent information (1)
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Why is it important to know patent literature?
to avoid reinventing what is already existing (a huge amount of intellectual activity is wasted because of the duplication of the research and design for inventions already available and published in the patent literature)
to be forewarned about the risk of accidentally infringing someone else’s patent;
if a search draws a blank and it appears that no-one else has patent protection, this fact will help a patent attorney in the process of drafting your own application
Patent information (2)
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The usefulness of patents as technical information decreases for the following reasons:
the availability (completeness) of data;
how to retrieve patent information;
fueled by globalization, volume of patent information is growing dramatically (China, Japan, Korea and Taiwan)
increasing complexity of patent applications [too many claims and pages of description]
Patent information (3)
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Patent information (4)
a complete patent database doesn’t exist: [ex. Patentscope: Japanese PCT patent collection is not complete, while Chinese PCT patent applications are not available at all; Russian-language WO texts are available from the beginning of the system in 1978 until 1997, but not for recent years]
“full text” search: not always available
the available full text must be searchable and not only displayable
are automatic translators efficient?
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first page: bibliographic information + summary description claims drawings
Specification
• technical field of the invention
• state of the art (definition of the technical problem)
• summary (advantages of the invention)
• description of drawings
• detailed description
• working examples
Patent sections (1)
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Bibliographic information contained in the first page (1)
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Bibliographic information (2)
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Bibliographic information (3)
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Search report (1)
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Xparticularly relevant documents when taken alone (implies: the claimed invention cannot be considered novel or cannot be considered to involve an inventive step)
Yparticularly relevant if combined with another document of the same category
A documents defining the general state of the art
O documents referring to non-written disclosure
Pintermediate documents (documents published between the date of filing and the priority date)
T
documents relating to theory or principle underlying the invention (documents which were published after the filing date and are not in conflict with the application, but were cited for a better understanding of the invention)
Epotentially conflicting patent documents, published on or after the filing date of the underlying invention
D document already cited in the application
Ldocument cited for other reasons (e.g., a document which may throw doubt on a priority claim)
Source: D. Harhoff et al. – European Patent citations – How to count and how to interpret them? – EPIP Workshop (2004)
Search report (2)
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Search report (3)
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Search report (4)
Patent family members
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Patent kind codes
A1: publication with search report (ISR)
A2: publication without ISR
A3: publication of the front page + ISR
A4: further publication of amended claims
A8: corrected title page of an EP-a Document
A9: complete reprint of an EP-a Document
B1: patent granted
B2: patent granted after opposition
B3: patent granted with limitations
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Patent family
Source: E. Simmons – “Black sheep” in the patent family, “World Patent Information”, 31 (2009), p. 11 - 18
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The choice of database depends on the type of information
to search: for instance, the complete search of chemical
compounds or “Markush” structures is only possible with
professional tools (Dialog, STN, Questel - Orbit)
Choice of database
Coverage timeliness data
Searching procedures (1)
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• understand the invention: find out essential features
• keywords: identify a group of words (and synonyms)
• classification: select one or more classification codes corresponding to the invention
• databases
Searching for novelty can be difficult, because patent are legal documents and not necessarily written for ease of searching; they are drafted to be defended in court.
A patent search can be conducted in two ways:
by words (intuitive but subjective)
by classification
Searching procedures (2)
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There are several reasons why words may be insufficient when doing a search in patent documents:
• terminology used (the language used is a mixture between legal and technical terms (jargon); i.e. transistor “amplifying means”; electromagnetic shield “means for reducing electromagnetic radiation”)
• multilingual synonyms
• incomplete databases (there may be little or no text to search; for instance the USPTO database provides access to US patents since 1790 but has no text at all prior to 1976!)
A large percentage of all patent documents contain non-word information in the form of:
• technical drawings
• chemical or mathematical formulae
• electric circuit diagram
• genetic sequences
Searching procedures (3)
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Keywords searching (1)
Non-adequate terminology can be one of the main obstacles to obtain relevant searches (above all in emerging technical fields)
Ex. Patent analysis
Search query: “Patent processing NOT medicine NOT biology NOT chemistry” 586 patents
IPC analysis: most documents are classified into sections A, B and C (and not G)
Full text analysis: only 28 documents are relevant (5%)
The word “processing” is often used as a common term in chemical and metallurgical technology, while the word “patent” is mentioned in the state-of-art section of patent documents.
New search: “Patent analysis” 139 patents (75% of patent documents are relevant)
IPC analysis: 81% of these documents are classified into section GSource: Starešinič et al. – Patent Informatics – the issue of relevance in full-text patent document searches – Online Information Review (2009), vol. 33 No. 1, pages 157 - 172
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Non-adequate terminology is one of the main obstacles to relevant searches, especially if well-defined keywords are non-existent .
Terminology problems may also occur with researchers who use English as their second language
New terms in newly emerging fields sometimes occur for the first time in patent documents
A good test of adequacy of terminology is IPC classification.
If a large proportion of patent documents are classified under IPC sections outside the user’s interest, this indicates that the search profile was not well chosen and that the search should be repeated with better search terms.
Keywords searching (2)
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Why classification?
Advantages
• classifications provide access to concepts rather than words. They enable a single inventive concept to be represented concisely and unambiguously, and the enable complex concepts to be searched in circumstances where single words or phrases don’t lend themselves to efficient retrieval.
• classifications are language-independent
Drawbacks
• classification is not a panacea: sometimes classes are defined in a too specific manner
Generally the best search strategies require a combination of independent mechanisms, such a s free-text plus classifications
Classification search (1)
Source: S. Adams – Comparing the IPC and the US classification systems for the patent searcher – World Patent Information (2001), vol. 23, pages 15 – 23
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Classification schemes may be used in two manner:
1. when classification perfectly matches the inventive concepts (subgroup level)
2. in parallel with other systems (subclass level )
Examples:
a single term may reflect a complex concept (A61K 31/595: “medicinal preparations containing a mixture of vitamin A and D”)
RAM + H01L (integrated circuits) [if F02K (ram-jet)]
Classification Groups number
IPC 70.000
ECLA 134.000
JPO: F-terms 340.000
JPO: FI 190.000
Classification search (2)
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Limits on the use of classification codesA61K31/43 (medicinal preparations containing further heterocyclic ring; e.g. penicillinC07D 499/00 (heterocyclic compounds, e.g. penicillin)The search in only one of the two classification codes don’t allow to obtain a full information.
USPC (430 classes 140.000 subclasses) only for US patents
FI and F-terms only for JP patents
Classification searching (3)
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IPC vs. ECLA (1)
The technical content of patent documents is classified in accordance with the International Patent Classification (IPC). The publishing office assigns an IPC symbol valid at the time of publication of the patent application. The complete IPC can be found on the website of the World Intellectual Property Organization (WIPO ).
The classification symbol is made up of a letter denoting the IPC section (e.g. A), followed by a number (two digits) denoting the IPC class (e.g. A63), still followed by a letter denoting the IPC subclass (e.g. A63B). A number (variable, 1-3 digits) denotes the IPC main group (e.g. A63B49), a forward slash "/", and a number (variable, 1-3 digits) denotes the IPC subgroup (e.g. A63B49/02).
The technical content of patent documents is classified in accordance with the International Patent Classification (IPC). The publishing office assigns an IPC symbol valid at the time of publication of the patent application. The complete IPC can be found on the website of the World Intellectual Property Organization (WIPO ).
The classification symbol is made up of a letter denoting the IPC section (e.g. A), followed by a number (two digits) denoting the IPC class (e.g. A63), still followed by a letter denoting the IPC subclass (e.g. A63B). A number (variable, 1-3 digits) denotes the IPC main group (e.g. A63B49), a forward slash "/", and a number (variable, 1-3 digits) denotes the IPC subgroup (e.g. A63B49/02).
Source:
esp@cenet Source:
esp@cenet
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IPC vs. ECLA (2)
The ECLA classification system is an extension of the International Patent Classification (IPC). It is however more precise, having twice as many entries (ECLA: 140 000; IPC: 70 000). EPO examiners use it to classify patent documents and thus facilitate their prior-art searches. ECLA is revised continuously, and the documents are then reclassified accordingly.
ECLA usually follows the current IPC; up to IPC subgroup level, the ECLA and IPC classification symbols are in most cases identical. Optionally, the ECLA classification scheme may be further subdivided beyond IPC level by ECLA subgroups represented by a letter which may in turn be followed by a digit and a letter (e.g. B65D81/20B2A).
The ECLA classification system is an extension of the International Patent Classification (IPC). It is however more precise, having twice as many entries (ECLA: 140 000; IPC: 70 000). EPO examiners use it to classify patent documents and thus facilitate their prior-art searches. ECLA is revised continuously, and the documents are then reclassified accordingly.
ECLA usually follows the current IPC; up to IPC subgroup level, the ECLA and IPC classification symbols are in most cases identical. Optionally, the ECLA classification scheme may be further subdivided beyond IPC level by ECLA subgroups represented by a letter which may in turn be followed by a digit and a letter (e.g. B65D81/20B2A).
Source:
esp@cenet Source:
esp@cenet
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Sections
A: Human necessities
B: Performing
operations; Transporting
C: Chemistry;
Metallurgy
D: Textiles; Paper
E: Fixed constructions
F: Mechanical
engineering; Lighting;
heating; Weapons;
Blasting
G: Physics
H: Electricity
Classes, subclasses
A 61:Medical or veterinary science; Hygiene
A61F: Filters implantable to blood vessels, prostheses …
A61L: Methods or apparatus for sterilizing materials …
Groups, subgroups
A61L 27Materials for prostheses
A61L27/02Inorganic materials...
A61L27/14Macromolecular materials
Technical field Detailed level More detailed level
IPC (1)
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Catc
hw
ord
s in
dex
http://www.wipo.int/classifications/ipc/ipc8/?lang=en
IPC (2)
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IPC natural language search - http://www.wipo.int/tacsy/
DNA computer
IPC (3)
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IPC (4)
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There are four types of ECLA division:
1. identical to an in-force IPC group, containing the same subject matter as the IPC (IDENTICAL)
2. groups contains additional subject matter to the IPC (MOVED)
3. identical to a superseded IPC group (OLD)
4. new sub-divisions of an IPC group (UNIQUE)
ECLA (1)
Advantages:
• more detailed;
• dynamic (continuously revised)
Drawbacks:
• some patent applications (JP, KR, CN, etc…) are not classified;
• recent patent applications are not classified (only IPC codes are available)
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ECLA (2)
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Index
Patent information: a competitive advantage
Tools and methodologies for novelty and inventive step evaluation
TTO © 2009 M. Barbieri © 2010
Patent databases (1)
Free public sources (provided by patent offices)
• Espacenet, USPTO, JPO, UIBM
Free sources (provided by independent patent websites; i.e. PATENT LENS, GOOGLE PATENTS)
Professional tools
• Derwent, Micropatent, Delphion, QPAT
Patent databases may be:
• specific if they contain only patent data;
• mixed if they also contain scientific publications
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Patent data available and search possibilities vary considerably:
IPDL: simple bibliographic or keyword search
CIPO: include old patents not available elsewhere
EPO (on the web since 1998 with Esp@cenet) + USPTO (on the web since 1994): full access to the patent register and file histories
SurfIP: meta-search engine
GOOGLE PATENTS: only US patents
Patent Lens: full text of AU and EP granted patents
Patent databases (2)
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An ideal database should contain all applications,
granted patents, and utility models of all patent
offices. Bibliographic data, the full text and
drawings and legal status of patents should also be
available.
Patents should be translated into one language,
so as to facilitate search and evaluation of prior
art.
Patent databases (3)
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No patent database is perfect, but all are highly incomplete
Select patent databases according to needs
Optimal result
Search on different databases with different criteria
Patent databases (4)
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“Full text”
chemical compounds search
genetic sequences search
The complete indexing of compounds / sequences is an added-value of professional tools compared to free databases.
Reprocessing of titles and summaries
Patent databases (5)
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Esp@cenet (1)
http://ep.espacenet.com/?locale=EN_ep
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Field where you enter keywords
Database selection: EP, WIPO
Esp@cenet (2)
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Click on title
Esp@cenet (3)
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Summary and drawing
Patent sections
Esp@cenet (4)
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• maximum of 500 matching documents listing
• no statistical analysis possible
• no search history provided
• only ECLA and IPC classes searchable
• when combining search fields the default operator is AND and cannot be changed (OR within fields is possible)
Esp@cenet (5)
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USPTO patent database (1)
http://patft.uspto.gov/
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USPTO patent database (2)
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USPTO patent database (3)
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USPTO patent database (4)
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JPO patent database (1)
http://www.ipdl.inpit.go.jp/homepg_e.ipdl
Patent Abstract of Japan
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Number search
C07D213/00
OR
JPO patent database (2)
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For viewing searching results
Max 1.000 results
JPO patent database (3)
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For viewing patent bibliographic data
JPO patent database (4)
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Automatic translation
Japanese specification
JPO patent database (5)
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JPO patent database (6)
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Politecnico Milano
WIPO patent database (1)
http://www.wipo.int/pctdb/en/
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Classification search IPC (B82B) – graphical representations of results
WIPO patent database (2)
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Intellogist
http://www.intellogist.com/wiki/Resource:Resource_Finder
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• carry out a preliminary search (trough keyword) in “Title” or “Title and abstract” in order to obtain a minimum set of documents
• check if documents are relevant
• if the answer is “yes”, consider patent classification of relevant documents; otherwise repeat the search with different keywords
1st strategy
2nd strategy
• find one (or more) relevant classifications which could involve the concepts that we are looking for
• use of this classification found before, for to broaden the search to retrieve a more complete set of relevant patents
Searching strategies