Beruflich Dokumente
Kultur Dokumente
Certificate Course
Intellectual Property Rights & IP Services
Session Title
Prior Art Searches - Overview
Trainer
Tarun Kumar Bansal
Director, Sagacious Research
“ 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
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)
Identifying Key-Features
Presentation of Results
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
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 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
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
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.
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
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
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
Thank You
www.sagaciousresearch.com