Prior art searches: Introduction Massimo Barbieri (Technology Transfer Office) – Politecnico di Milano E-mail: [email protected]@polimi.it

Prior art searches: IntroductionMassimo Barbieri

(Technology Transfer Office) – Politecnico di Milano

E-mail: [email protected]

mailto:[email protected]

TTO © 2009 M. Barbieri © 2010

Index

Patent information: a competitive advantage

Tools and methodologies for novelty and inventive step evaluation


• 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)


PCT

6 months

Patent publication

12 months

Before thesis IT

Internal Legal steps“Istruttoria”

State of the art search

Patentability search


Monitoring

Filing


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


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”


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


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)


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


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)


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



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]




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?


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)


Bibliographic information contained in the first page (1)


Bibliographic information (2)


Bibliographic information (3)


Search report (1)


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)


Search report (3)


Search report (4)

Patent family members


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


Patent family

Source: E. Simmons – “Black sheep” in the patent family, “World Patent Information”, 31 (2009), p. 11 - 18


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)


• 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



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



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


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)


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


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)


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)


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


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


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)


Catc

hw

ord

s in

dex

http://www.wipo.int/classifications/ipc/ipc8/?lang=en

IPC (2)


IPC natural language search - http://www.wipo.int/tacsy/

DNA computer

IPC (3)


IPC (4)


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)


ECLA (2)


Index

Patent information: a competitive advantage

Tools and methodologies for novelty and inventive step evaluation


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


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



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.



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



“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



Esp@cenet (1)

http://ep.espacenet.com/?locale=EN_ep


Field where you enter keywords

Database selection: EP, WIPO

Esp@cenet (2)


Click on title

Esp@cenet (3)


Summary and drawing

Patent sections

Esp@cenet (4)


• 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)


USPTO patent database (1)

http://patft.uspto.gov/








JPO patent database (1)

http://www.ipdl.inpit.go.jp/homepg_e.ipdl

Patent Abstract of Japan


Number search

C07D213/00

OR



For viewing searching results

Max 1.000 results



For viewing patent bibliographic data



Automatic translation

Japanese specification





Politecnico Milano

WIPO patent database (1)

http://www.wipo.int/pctdb/en/


Classification search IPC (B82B) – graphical representations of results

WIPO patent database (2)


Intellogist

http://www.intellogist.com/wiki/Resource:Resource_Finder


• 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

Documents

Prior art searches: Introduction Massimo Barbieri (Technology Transfer Office) – Politecnico di Milano E-mail: [email protected]@polimi.it