Patent Searching Primer UofT Impact Centre June 13, 2016

Transcription

1 Patent Searching Primer UofT Impact Centre June 13, 2016 Isi Caulder Partner B.A.Sc. (Eng. Sci.), M.A.Sc. (Elec. Eng.), J.D Tony Orsi Partner B.A.Sc. (Elec Eng.), M.A.Sc. (Elec. and Biomed Eng.), MBA

2 IntroducGon to Bereskin & Parr LLP IP firm founded in 1965 Offices in Toronto, Montreal, Waterloo and Mississauga Over 70 patent agents, lawyers and trademark agents ExperGse in all areas of technology Strong ProsecuGon and LiGgaGon groups 2

3 Topics 1. Requirements for Patentability 2. Patent Search Strategy 3. Patent Search Example 4. Analysis of Results 5. Freedom To Operate 6. Patent Searching LimitaGons 3

4 Legal Disclaimer This presentation does not constitute solicitor-client relationship but rather, serves as a guide and not actual legal advice. For specific inquiries, please consult Isi or Tony.

5 1. Requirements for Patentability Novel: The invengon does not form part of the state of the art Non-Obviousness: It would not have been obvious to a person of ordinary skill to combine known elements to arrive at the claimed invengon U.lity: The InvenGon being useful, such as providing some immediate benefit to the public Patentable subject ma7er: Any new and useful process, machine, manufacture, or composigon of mazer, or any new and useful improvement thereof 5

6 Prior Art Searching Helps to Assess Patentability determines the state of the art assessing Novelty and Non-Obviousness requires an understanding of the current state of the art examples of prior art: issued patents and published applica.ons argcles published in peer-reviewed journals conference proceedings, conference posters any other publicly accessible publicagons including books, magazines, videos etc. 6

7 2. Patent Searching Strategy Three general steps: 1. a general search to idengfy keywords/terminology 2. a patent database search to see what has already been disclosed in relagon to your invengon 3. focus the search to idengfy other relevant patent documents based on your findings in step 2 7

8 Step 1: General Search Purpose: To understand the technology, idengfy companies or businesses in the field, idengfy keywords or terms of art Where to Search: Google, Google Scholar, PubMed, ISI Web of Science, IEEExplore What to look for: Review search results for close matches in terms of similar features and/or methods of operagon Tip: If you find a relevant product or journal argcle, then try to find a corresponding patent/applicagon 8

9 Step 2: Patent Database Search Purpose: To idengfy subject mazer keywords ( patentese ), classificagon codes, relevant prior art, inventors and assignees Where to Search: Google Patents and, if required, various nagonal-level patent office databases with large databases (USPTO, EPO, WIPO-PCT, China, Japan and South Korea) and also consider Canada; Espacenet enables searching over mulgple databases at once How to search: Keep your keywords broad at first to get a lay of the land. Google Patents offers a number of ways to search Natural Language: autonomous vehicle camera Exact Phrases: autonomous vehicle camera Restrict results to a specific inventor: inventor:edison Restrict results to a date range: before:2001 If there is a known engty in the field, perform an Assignee Search : assignee: Google Inc. 9

10 Step 3: Focus the Search Purpose: To idengfy addigonal relevant prior art based on your results from step 2 Where to Search: Search on Google Patents and, if required, various nagonallevel patent office databases as described previously How to Do it: Use addigonal keywords and/or search restricgons Backward-forward cite a given patent document Review the Patent CitaGons and Cited By secgons of the Google Patents document Patent CitaGons = current document cigng older documents (backward) Cited By = newer documents cigng the current document (forward) Search based on ClassificaGon Codes used in the documents that appear relevant US/CPC Class DefiniGons (Supported by Google Patents and Scholar) can be found at hzp:// 10

11 A MagneGc Turbine: 11 A disc wheel with mounted wheel magnets Patent Search Example Fixed magnet repels wheel magnets to cause congnuous spinning of disc wheel Main Features: Wheel turns congnuously Add a generator to the disc wheel to obtain infinite energy Possible Keywords: ConGnuously spinning wheel with magnet (any others?)

12 Keywords Used: ConGnuously Spinning wheel with magnet New Subject MaZer Keywords Discovered Bar magnet, rotor wheel, rotor sham StaGc magnets, permanent magnets Perpetual MoGon Machine Step 1: General Search 12

13 Step 2: Patent Database Search Keyword entry 13 Patent-specific search op.ons

14 Step 2: Patent Database Search Results Two possibly relevant prior art documents Both are currently pending applicagons US Pub. No. US A1 Title: Perpetual MoGon Machine Inventor: Paul McDonald Filed: October 25, US Pub. No. US A1 Title: RotaGonal Generator MagneGc AssisGng System Inventor: Juan Ramon Aponte-Rivera Filed: July 8, 2010

15 Step 3: Narrow the Search Forward/Backward search of the Aponte-Rivera ApplicaGon 15

16 4. Analyzing Prior Art Search Results Make a list of the main essengal features of your invengon Compare invengve features to located prior art to assess: Novelty: are any invengve features not in the prior art? Non-obviousness: can 2 or more references with or without common general knowledge in the tech area be combined to arrive at the invengve features? PotenGal claim scope: Broader claims are more valuable 16

17 4. Analyzing Prior Art Search Results Consider analyzing your results graphically: Make a table with prior art references (PAR) across the rows and invengve features (InFe) across the columns Enter an X if a PAR describes the InFe, a Y if the PAR is slightly related to the InFe and no entry if the PAR does not describe the InFe Look at the table: the more X and Y entries in the table, the closer the PAR and the narrower the available claim scope (if any) 17 Example InFe #1 InFe #2 InFe #3 PAR #1 X PAR #2 X Y PAR #3 PAR #4 Y

18 5. Freedom To Operate Perform a patent search to determine if your technology infringes the patent rights of others Restrict the patent search to countries where: your company is located, manufacturing will occur, where the technology will be commercialized, and Where your compegtors are located For located issued patents that are in force, analyze the claims to see if the technology has each feature by doing a claim chart this can be a two column chart with the claims broken down element by element in the first column and a second column with an x indicagng if your technology has the claim element 18

19 5. Freedom To Operate For located issued patents that are in force with problemagc claims, consider: Can the claims be narrowly construed (look at the examinagon history) Can you design around the claims? Can you find prior art to invalidate the patent or restrict the scope of the patent s claims? Best prior art is novelty knock-out prior art If no, can you combine prior art easily to arrive at the main claims? Can you buy or license the patent? 19

20 6. Patent Searching LimitaGons No patent search is perfect! Prior Art can be found anywhere in the world you have limited Gme for searching you have limited budget for searching Patent applicagons are kept secret for 18 months There might be a delay between when a patent issues or when a patent applicagon is published and when it is added to a database for searching U.S. patent applicagons filed before November 29, 2000 remain confidengal ungl they issue and cannot be searched Patent databases may have errors in them the search might not use the best keywords or classes 20

21 21 Prior Art Searching Resources Patent Databases Google Patents: hzp:// European Patent Office: hzp://worldwide.espacenet.com Canadian Intellectual Property Office: hzp://brevets-patents.ic.gc.ca/opic-cipo/cpd/eng/search/ advanced.html United States Patent and Trademark Office: Issued Patents: hzp://past.uspto.gov/netahtml/pto/search-bool.html Published Patent ApplicaGons: hzp://appm1.uspto.gov/netahtml/pto/search-bool.html Patent searching tutorials: hzp:// hzp://

22 22 QuesGons?

23 THANK YOU! Isi Caulder Partner Tony Orsi Partner