Searching Validity/Invalidity In the Pharmaceutical and Chemical Field. Judy Johnson Philipsen, TPRI Northeast PIUG Conference October 9, 2007

Transcription

1 Searching Validity/Invalidity In the Pharmaceutical and Chemical Field Judy Johnson Philipsen, TPRI Northeast PIUG Conference October 9, 2007

2 Purpose of Validity/Invalidity Search Determine whether a patent already obtained on invention is valid or not Validity of patent can be challenged during whole lifetime of patent (and under certain circumstances even after it has been lapsed) by filing opposition, re-examination, or invalidity action, etc.

3 Time Range for Searching In general, all literature published before priority date of the patent to be invalidated should be searched Grace period for public disclosure 12 months for US 6 months for EP

4 Validity/Invalidity Search is useful to: Determine value of potential licensed patent by licensee Determine strength of patent for setting minimum royalty payments by licensor Invalidate patent in order to avoid infringement or legal challenge

5 Search General Approach Review/learn search topic Understand exactly client s request Create comprehensive strategy Search using available and appropriate files Analyze Prepare organized and understandable report

6 Search Specific Approach Invalidity searches should focus on areas or sources of prior art which patent granting office(s) did not search in special case or usually is not used for searches: Searches focuing on literature (patent and non- patent) not covered by usual public patent data bases Searches using other IPC classes as used by the patent office(s) in individual case Searches conducted by patent offices not involved in prosecution of the special patent family Hand searches in libraries as well as searches on public use and other non-written prior art

7 Validity/Invalidity Searching A very big topic! For this presentation, concentrate on a few issues and techniques

8 Understanding the request Review patent(s) and background Conference with the client Which date(s) Specific claims? Specific client suggestions/preferences Personal suggestions Check for prior opposition, searches Structure how specific or broad?

9 Query Strategy (Term) Evaluate way patent is classified and indexed in HCA and DWPI Separate time ranging, concept terms and codes statements to combine in different ways Review good answers to find additional terms Separate patent and literature searching Que statements in STNGUIDE with Command Window

10 Que statements in STNGUIDE with Use to give example of command window

11 Patent Searching (Term) HCA and WPINDEX(WPIX) AND terms primarily CT, RN, MC, DRN, IPC, etc. indexing Transfer HCA PNs to WPI Fulltext patent databases Combine terms with appropriate linking operator (p, s or l) Limit with classification codes Transfer PNs to WPI

12 Patent Term Searching (con t) Combine sets & identify duplicates Dup ide and fsort D an ti 1- Can look at patents in Esp@cenet Download promising answers May also look at related patents and what they cite

13 Example of Patent Dup IDE and Fsort FILE 'WPINDEX, HCAPLUS, USPATFULL, PCTFULL, EPFULL' ENTERED AT 05:59:12 ON 13 SEP 2007 L39 46 DUP IDE L36 L19 L25 L28 L31 (INCLUDES 13 SETS OF DUPLICATES) Example of dup ide and fsort L40 46 FSO L39 15 Multi-record Families Answers 1-39 Family 1 Answers 1-4 Family 2 Answers 5-9 Family 3 Answers Family 4 Answers Family 5 Answers Family 6 Answers D an ti 1-

14 L40 ANSWER 5 OF 46 WPINDEX COPYRIGHT 2007 THE THOMSON CORP on STN FAMILY 2 AN [16] WPINDEX TI New aryloxy and hetero:aryloxy alkenylene amine(s) and aldehyde - useful as antidepressants, anti:obesity, anti-smoking and anti-alcohol abuse agents L40 ANSWER 6 OF 46 HCAPLUS COPYRIGHT 2007 ACS on STN FAMILY 2 AN 1990: HCAPLUS DN 113: TI Preparation of 3-aryl-3-aryloxyalkylamines as central nervous system drugs L40 ANSWER 7 OF 46 USPATFULL on STN FAMILY 2 AN 93: USPATFULL TI Aryloxy-, arylthio-, heteroaryloxy-, heteroarylthio-alkenylene derivatives of amines and pharmaceutical use Get patent by advanced search in Espacenet with date and keywords of title L40 ANSWER 8 OF 46 PCTFULL COPYRIGHT 2007 Univentio on STN FAMILY DUPLICATE 2 AN The WO patent number (WO )

15 Literature Term Search STNINDEX to determine databases Search selected databases multifile or individually Use Lexicon or theasaurus to find synonyms and control terms Select file order according to cost and value of database Dup rem l#s in STNGUIDE Download answers for review

16 Structure Validity Search Broad structure in REG D scan to evaluate hits S RN in HCA with time limit If available, transfer to DWPI to get full abstract Check Markush in patent copy MARPAT and MMS Class and BT Consider using more than one structure for different approaches

17 Analysis my usual way Import answers into BizInt Extra columns for ranking and comments Analyze patents in Espacent or from downloaded patent Add comment assessment and ranking Same with literature answers

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19 Beyond Online Searching - really need to kill a patent Library Alternate sources Different countries In native languages

20 The report just the facts, Ma am Summary of approach Review of request and discussion Detailed online search history Sources used Summary of Results Avoid opinion words such as relevant may, of interest Records BizInt Table followed by records Order in descending relevance Hit comments Attached patents and articles

21 References ces/tools_strategies/bp97/pate ntvalidity.htm Information Sources in Patents(2006), Stephen R. Adams

22 Acknowledgements Zhifu Shu, ExxonMobil Res. & Eng. Co. Ford Khorsandian and Pallavi Campion, TPRI Swami Narayanaswami, TPRI Gerhard Fischer, Syngenta Crop Protection AG Workshops and trainings by CAS, Fiz-Karlsruhe, and BizInt