Making patent search more effective

Finding a good Patent agent in india

2015-07-22T23:31:00.001+05:30

Intellectual rights are like land rights the more you have it more you want to acquire, and in the large demography like India it is tough to find a good patent agent who can work efficiently and give you the best results out of your intellectual rights, any new inventor who thinks he has done something incredible needs to patent his/her invention otherwise they will end up having nothing for their notable work in the field to technology.

So i decided to dig some Professional companies who work for protection of rights of inventors.

1. Talwar And Talwar Consultants, Chandigarh- a good company with ISO rating has very competent staff and they offer their service at very reasonable price.

2. PatRig consultants- Its a new startup with some brilliant searchers and agents they will work effortlessly for your invention.

Freedom To Operate Searching Guidelines

2012-12-06T00:02:00.000+05:30

Is it quite common and important practice to conduct FTO search before launch a new product in market as it tells about the competitors in the market and also tells from whom license for the technology has to be taken to sell that product.

There are few things that need to be considered while conducting an FTO search.

You should know in which country/region company is about to launch the product as the patent is jurisdiction specific you need to focus on only countries where company is willing to sell the product.
All in-force and alive patents need to be analyzed. Remember lapsed patents are equivalent to NPL they have no rights what so ever.
You are not supposed to search for Non-Patent literature.
All patent applications which are pending in respective authorities need to be analyzed, make sure they are not abandoned in office action
All WIPO applications which have respective authority in designated state need to be analyzed.
All the features related to product should be mapped using claims only (You can add supporting text for claims)

Search String types

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Broad Search Strings

Result sets are in wide range.
Objective is to catch as many prior art as possible
When narrow strings are not providing desired results.
Most Helpful When:

Researcher is not familiar with the subtleties and nuances of a patent
Researchers need to learn broader themes (classifications), keywords, and ideas for the patent study

Narrow Searches

To obtain very focused research results
The main Goal is expanding on specific areas
When domain has too much of documents

Most Helpful When:

You already have most relevant keywords, themes (classifications), and ideas
You have identified the specific areas where more detail is needed

Combination Logic

Combination of both narrow and broad search strings are very helpful in finding relevant prior art. There are various methods of making combination logic.

broad theme and narrow keywords.
narrow keywords and broad keywords.
broad keywords and narrow search scope (eg. searching only in title)
narrow keywords and broad scope

NOTE:

always remember date criteria.
start with the software and databases your are comfortable.
Go for new databases which you haven't tried yet but could yield something.

steps to conduct patent search

2012-09-15T17:20:00.005+05:30

This post demonstrates few typical steps taken in prior art search, with some steps being more or less applicable for each of the different types of searches, and every step can be further divided if needed.

1) Read disclosure/description/patent document of interest carefully and determine its novelty.

2) Extract all keywords (use dictionaries like thesaurus for assistance).

3) Create Boolean search strings using various keyword combinations while avoiding syntax and typo errors for the database used (e.g., Total Patent, Orbit, Delphion, USPTO, Google, etc.). Also, take advantage of additional tools such as word stemming, wild cards, proximity, term weighting, relevancy, etc.

4) Determine the scope of documents to be searched depending on type of search being performed (e.g., US patents, US patent applications, European patent documents, PCT documents, non-patent literature, Japanese patents, etc.)

5) Include limitations as needed, e.g.: location within patent documents (title, abstract, claims), date criteria (invalidation search), patent country (FTO search)

6) Perform searches based on the steps above.

7) Analyze results gathered after (6) and determine their relevance.

8) Narrow or expand the scope of (3), (4), and (5) if required based on relevance of results and re-perform step 6 and 7. Otherwise, continue to next step

9) Collect and save all results in excel sheet OR other file — many databases allow searches and results to be saved for future review and performance.

10) Review all results on relevance to claim chart.

11) Determine most close hits in list, and save this collection.

12) Determine classification class/subclass(es) (US classification, IPC, ECLA, F-terms) to narrow down your search from (i) the most relevant patent documents and (ii) reviewing classification manual.

13) Search using these classifications using the current classification field and create Boolean search strings based on both classification and keywords.

14) Analyze results (as in step (7)).

15) Collect and save all results.

16) Create a list of the most relevant.

17) Use Espacenet to review all the patent documents in this list to review:

I. “Citing” references

II. “Cited” references

III. Sibling and parent patent documents

IV. For the most interesting references, also see the prosecution history to gather even more references

18) Repeat steps (15), (16), and (17) as needed.

Your suggestions for further improvements and refinements are welcomed.

Patent Translations for non english patents

2012-08-24T01:09:00.000+05:30

There is always a problem with translations in the hunt of most relevant prior art. I have dealt with the same on numerous occasions. though there are some tips which can help to get some good machine translation free of cost, as most of the time searcher only needs an idea of how invention works.

JAPAN

As japan is a major patent authority it is often required that Japanese patents can be machine translated though PAJ provides good and reliable machine translation but it only works for patents published after 1992. Before it there is not much patent translation available even subscription based patent searching databases only offer translation for Japanese patents after 1992.

Note: In case the Japanese patent is filed in WIPO you can obtain its translation via patent scope using google translator OR microsoft translator.

KOREA

Korean patents make things worse as the translation from Google translator is not very good. though in case patent is published after 2006 thomson innovation gives a good patent translation through its in house machine translation.

Note: In case Korean patent is filed in WIPO, you can obtain its translation via patent scope using KIPRIS translation which otherwise would cost 40$.

China

chinese patent translation is new thing to patent searchers but as the filing is increasing very rapidly in chinese patent office. Chinese translations are also very vital to patent searching, all subscription based patent search database provide acceptable translation for Chinese patents, but for better one you can use SIPO translator. which gives better translation than Google OR Microsoft.

if any buddy has some other advises please leave comments. thanks

Google's updated Prior Art Search

2012-08-15T18:32:00.000+05:30

Recently Google has added a new service to its patent search service "Prior art search".

the blue button left to read this patent.

This tool tries to find relevant prior art to the subject patent. It is a good value addition by google though it is still in its early stages and results are not very good but it is likely to get better. There is the screen shot that how it works.

There is also a addition by google to its patent search engine. now EU patents can also be searched on google, hope google makes a excellent free prior art search database.

Inventive Step

2012-08-07T00:44:00.000+05:30

In many laws, the inventive step requirement means that a claimed invention shall not be obvious to a person skilled in the art at the time of the filing date (or, where applicable, priority date), or at the time the invention was made, in view of the prior art. In some countries, instead of the expression “obvious” (or “non-obvious”), expressions such as “inventions which could have been easily made” or “[an invention] having prominent substantive features and representing a notable progress” appear in national laws. Whatever term is used, the definition of “prior art” or “state of the art”, directly affects the determination of the inventive step. Where the scope of the prior art is limited, it is more likely that a certain claimed invention would be considered as involving an inventive step. Further, as for the novelty requirement, the interpretation and determination of the scope of the claimed invention is essential for the determination of the inventive step.

National and regional authorities have developed various methodologies that can be applied when assessing inventive step, such as the “problem and solution”-approach used in the EPO, the “Graham test” in the United States of America and the “reasoning test” in Japan. Further, the interpretation of the term “inventive step”(“non-obviousness”) by national courts has developed into a body of case law in many countries. Since a vast majority of inventions are based on existing inventions, how to assess inventive step in an invention based on a combination of existing features has been extensively developed in a number of jurisdictions. Based on such case law, a number of patent offices publish examination guidelines, which are addressed primarily to the office’s examiners for consistent application of the law, but also to applicants and patent practitioners for a better understanding of office practices.64 Such examination guidelines typically contain the methodology, various factors to be taken into consideration (for example, problems to be solved by the invention, advantageous effects of the invention and secondary considerations such as commercial success and long-felt needs) and practical examples in various technical fields.

TRIPS Agreement

2012-07-22T23:00:00.003+05:30

The TRIPS Agreement contains the national treatment principle and the most-favored-nation principle. The latter principle provides that any advantage, favor, privilege or immunity granted by a Member to the nationals of any other country (whether a Member or not) shall be accorded immediately and unconditionally to the nationals of all other Members, with certain specified exemptions. As is the case for national treatment, procedures provided in multilateral agreements concluded under the auspices of WIPO relating to the acquisition or maintenance of intellectual property rights are exempted from this principle.

Article 7 of the TRIPS Agreement in conjunction with the preamble of the Agreement sets out the objectives of the Agreement: the protection and enforcement of intellectual property rights should contribute to the promotion of technological innovation and to the transfer and dissemination of technology, to the mutual advantage of producers and users of technological knowledge and in a manner conducive to social and economic welfare, and to a balance of rights and obligations. Article 8 provides “principles” which recognize the rights of Members to adopt measures necessary to protect public health and nutrition, and to promote the public interest in sectors of vital importance to their socio-economic and technological development, provided that such measures are consistent with the provisions of this Agreement. It also recognizes that appropriate measures, provided that they are consistent with the Agreement, may be needed to prevent the abuse of intellectual property rights by right holders or the resort to practices which unreasonably restrain trade or adversely affect the international transfer of technology.

Compared with the treaties adopted under the auspices of WIPO,one of the main particularities of the TRIPS Agreement is the dispute settlement system established under the WTO Agreement. Articles XXII and XXIII of GATT 1994 (except subparagraph 1(b) and 1(c) of Article XXIII), as elaborated and applied by the WTO Understanding on Rules and Procedures Governing the Settlement of Disputes, apply to consultations and the settlement of disputes under the TRIPS Agreement. This means that benefits enjoyed in another trade area may be withdrawn in retaliation for the violation of the TRIPS Agreement (so-called cross-retaliation).

Patent Thickets

2012-07-22T01:47:00.000+05:30

In general the term “patent thicket” describes a situation where a product involves a web of patents that are owned by a number of different patentees so that a company which wants to commercialize the product is required to “clear” all the patents involved. This phenomenon is well-known in complex technologies, such as information and communication technologies, and in technical fields where a number of companies compete at the same level so that a fragmentation of patent ownership occurs. A changing research environment, increasing complexity and sophistication of technology and certain patenting strategies may have an influence on patent thickets.

Although there is no generally agreed objective definition of the term “patent thicket”, it suggests negative effects due to a “thicket” of patents, in particular, in the sense that third parties may be blocked from using a patented technology. The potential problems addressed are centered on the excessive transaction cost. Some suggest that cross-licensing may solve the vertical R&D and hold-up problems. By entering a cross licensing agreement, companies may secure freedom to operate. On the other hand, there is a risk that the problem is exacerbated because each competing company tries to build a bigger patent portfolio than competitors in order to create a better bargaining power to negotiate cross licenses. Another solution consists of patent pools to reduce a transaction cost, although some raise concerns about their compatibility with competition law.

It can be expected that combination and assimilation of technologies will further develop in the future. The boundaries of so-called “fields of technology” are more and more blurred. The same is true for various industries. It is said that, in the future, communication, computing and consumer electronics (3C) will be integrated in a single home network. According to an OECD report, as innovation becomes more science-based, and multi-disciplinary research draws together researchers and innovators from different fields with different practices for protecting IP, limitations on research access could become more widespread.

The results of the empirical studies in this area vary. One study found that, among academic researchers in the biomedical field, only 3% abandoned a project during the last three years because of too many patents covering their research field. It found that access to tangible research input was more problematic, as 20% of academic-to-academic requests were refused.87 However, another survey found that 40% – including 76% of those in the biosciences industry – responded that their research was affected by difficulties in accessing patented technologies: 58% reported delays, 50% reported changes in their research plans, and 28% abandoned their research. The most common reason for changing or abandoning the research was overly-complex licensing negotiations (58%), followed by high individual royalties (49%).

In sum, threats to an effective and efficient patent system are perceived in respect of the following key concepts:

Accessibility: The access to the international patent system covers not only patent granting procedures but also patent enforcement and invalidation procedures. Overall costs of obtaining and enforcing patents are primary obstacles for enhancing the access to the international patent system and to the benefits derived therefrom. Further, lack of support structures in the social, legal and economic market frameworks is another obstacle. The concept of accessibility also includes accessibility to technologies within the framework of the international patent system at fair cost. Further, certain emerging technologies and some particular business models have raised concerns as to the costs for third parties.

Timeliness: The unprecedented increase in demand for patent rights and the subsequent increase of the workload for patent offices has resulted in longer prosecution periods. Although a number of international efforts have been undertaken to address this problem, the need to develop improved platforms to facilitate further cooperation has been advocated.

Quality: A high legitimacy of the output of patent offices (for example, decisions to grant a patent or refuse a patent application) is desirable, since the costs arising from the mistakes made by patent offices will generally be borne by the users of the patent system, including the general public. An international mechanism to ensure the quality of patents would facilitate further cooperation among the offices. National patentability requirements are also under scrutiny, since national search and examination results increasingly have an international dimension.

Flexibility: The flexibility of the international patent system has undergone a twofold test. The first test related to the harmonization of patent laws, with a view to enhance accessibility, legal certainty and quality of the system and promote international cooperation. The second one tested the diversity of participants in the international patent system as well as the geographic distribution of patents. Further, depending on the fields of technology and business models, innovation and exploitation mechanisms vary significantly. An international framework that is flexible enough to support and meet various needs is requested.

The Budapest Treaty

2012-07-22T01:30:00.002+05:30

The Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure

Disclosure of the invention is a requirement for the grant of patents. Normally, an invention is disclosed by means of a written description. Where an invention involves a microorganism or the use of a microorganism, disclosure is not always possible in writing but can sometimes only be effected by the deposit, with a specialized institution, of a sample of the microorganism.

In order to eliminate the need to deposit in each country in which patent protection is sought, the Budapest Treaty provides that the deposit of a microorganism with any “international depositary authority” suffices for the purposes of patent procedure before the national patent offices of all of the contracting States and before any regional patent office (if such a regional office declares that it recognizes the effects of the Treaty). The European Patent Office (EPO), the Eurasian Patent Organization (EAPO) and the African Regional Intellectual Property Organization (ARIPO) have made such declarations. The “international depositary authority” is a scientific institution - typically a “culture collection” - which is capable of storing microorganisms. Presently, there are 37 such authorities.

The Treaty is primarily advantageous to the depositor who is an applicant for patents in several countries. Instead of depositing the microorganism in each and every country in which he files a patent application referring to that microorganism, he can deposit it only once, with one depositary, with the consequence of saving costs incurred by multiple deposits. Further, the security of the depositor is increased by the fact that, for an institution to become an international depositary authority, solemn assurances as to the seriousness and continued existence of that institution must be given by a State or by an intergovernmental industrial property organization.

35 USC 102 explained

2012-07-21T18:34:00.003+05:30

"35 USC 102(a) THE INVENTION WAS KNOWN OR USED BY OTHERS IN THIS COUNTRY,OR PATENTED OR DESCRIBED IN A PRINTED PUBLICATION IN THIS OR A FOREIGN COUNTRY, BEFORE THE INVENTION THEREOF BY THE APPLICANT FOR PATENT"

102(a) defines that US is a first to invent country and you are not going to get a patent if your invention was known (in written form usually) or used by others (practiced) by others in USA before date of invention, and if it was patented or was described in printed publication by others in any country than also you are not going to patent.

There are some keywords like 'Others' which means other than inventor himself. If inventor himself has published or practices he might still get a patent but it was done by others than he is not going to get a patent. Keyword 'in this country' means that that if the patent was being used in any country other than USA then he might still be able to get a patent. Keyword 'printed publication in this or foreign country' means that if the invention was patented or was described in printed publication (no language bar is there so publication can be of any language) he is out of luck. The keyword 'public' means that the publication should be available to public if the publication was maintained as confidential within a company its not public but if the publication was published in a magazine in some obscure magazine in place like China in chinese language its public. Keyword "before the invention" means the date which inventor can prove he actually invented the invention and it could be before earliest filing date (if inventor can prove it with some written records).

"35 USC 102(b) THE INVENTION WAS PATENTED OR DESCRIBED IN A PRINTED PUBLICATION IN THIS OR A FOREIGN COUNTRY OR IN PUBLIC USE OR ON SALE IN THIS COUNTRY, MORE THAN ONE YEAR PRIOR TO THE DATE OF THE APPLICATION FOR PATENT IN THE UNITED STATES"

102(b) is the description of the one-year grace period in USA. This is a one year statutory bar and it says that if the invention was either patented or was described in printed publication in anywhere in world (even by the inventor) more than one year before your application date then you are barred from getting a patent, and if it was being sold or in public use (even by inventor) in USA more than one year before the application date you are barred. There is a significant difference between 102(a) and 102(b) as 102(a) talks about date of invention and 102(b) talks about date of application (provisional OR non-provisional application).

The keyword "public sale" means either it was accessible to public or was commercially exploit. Keyword "on sale" generally refers to the subject of a commercial offer for sale not primarily for experiments or is ready for patenting.

"35 USC 102(c) HE HAS ABANDONED THE INVENTION"

inventor wants to abandon patent.

"35 USC 102(d) THE INVENTION WAS FIRST PATENTED OR CAUSED TO BE PATENTED, OR WAS THE SUBJECT OF AN INVENTOR’S CERTIFICATE, BY THE APPLICANT OR HIS LEGAL REPRESENTATIVES OR ASSIGNS IN A FOREIGN COUNTRY PRIOR TO THE DATE OF THE APPLICATION FOR PATENT IN THIS COUNTRY ON AN APPLICATION FOR PATENT OR INVENTOR’S CERTIFICATE FILED MORE THAN TWELVE MONTHS BEFORE THE FILING OF THE APPLICATION IN THE UNITED STATES"

First - if inventor or someone who represents inventor has filed a foreign application on his invention more than 12 months before your effective U.S. filing date.
Second - the foreign patent application have been filed by the same applicant as in the United States.
Third - foreign patent has been granted before the U.S. filing date, need not be published.
Fourth - and the same invention was involved.
102(d) defines the statutory bar for the inventors filing in US claiming foreign priority. Its a statutory bar like 102(b) but if inventor did not filed application in foreign country first he need not to worry about this law.

"35 USC 102(e) THE INVENTION WAS DESCRIBED IN (1) AN APPLICATION FOR PATENT, PUBLISHED UNDER SECTION 122 (B), BY ANOTHER FILED IN THE UNITED STATES BEFORE THE INVENTION BY THE APPLICANT FOR PATENT OR (2) A PATENT GRANTED ON AN APPLICATION FOR PATENT BY ANOTHER FILED IN THE UNITED STATES BEFORE THE INVENTION BY THE APPLICANT FOR PATENT, EXCEPT THAT AN INTERNATIONAL APPLICATION FILED UNDER THE TREATY DEFINED IN SECTION 351 (A) SHALL HAVE THE EFFECTS FOR THE PURPOSES OF THIS SUBSECTION OF AN APPLICATION FILED IN THE UNITED STATES ONLY IF THE INTERNATIONAL APPLICATION DESIGNATED THE UNITED STATES AND WAS PUBLISHED UNDER ARTICLE 21(2) OF SUCH TREATY IN THE ENGLISH LANGUAGE; [1] OR"

This clause is sometimes referred as the submarine provision. as it refers to prior art which are pending US patent applications that, when they are published or patented, suddenly become prior art as of their effective filing date.

So inventor is entitled to get a patent unless.... there is an unpublished patent that inventor could not possibly know about lurking under the surface, as under Section 122(b) patent application are maintained in secret by the patent office for 18 months after their priority date.

You should also know about the HILMER DOCTRINE to further understand the cases involving foreign priority and their effective filing date.

For 102(e) 2 if the patent was first filed as the wipe application before coming to US after 29 nov 2000, and the application is written in english with designated state as USA then the effective filing date is same as their respective WIPO filing date.

"102(f) HE DID NOT HIMSELF INVENT THE SUBJECT MATTER SOUGHT TO BE PATENTED, or"

35 USC 102(f) says that if an applicant derived his invention from someone else he is not the inventor.

"35 USC 102(g) (1) DURING THE COURSE OF AN INTERFERENCE CONDUCTED UNDER SECTION 135 OR SECTION 291, ANOTHER INVENTOR INVOLVED THEREIN ESTABLISHES, TO THE EXTENT PERMITTED IN SECTION 104, THAT BEFORE SUCH PERSON’S INVENTION THEREOF THE INVENTION WAS MADE BY SUCH OTHER INVENTOR AND NOT ABANDONED, SUPPRESSED, OR CONCEALED, OR (2) BEFORE SUCH PERSON’S INVENTION THEREOF, THE INVENTION WAS MADE IN THIS COUNTRY BY ANOTHER INVENTOR WHO HAD NOT ABANDONED, SUPPRESSED, OR CONCEALED IT. IN DETERMINING PRIORITY OF INVENTION UNDER THIS SUBSECTION, THERE SHALL BE CONSIDERED NOT ONLY THE RESPECTIVE DATES OF CONCEPTION AND REDUCTION TO PRACTICE OF THE INVENTION, BUT ALSO THE REASONABLE DILIGENCE OF ONE WHO WAS FIRST TO CONCEIVE AND LAST TO REDUCE TO PRACTICE, FROM A TIME PRIOR TO CONCEPTION BY THE OTHER."

35 USC 102(g) is basis of interference practice in the USPTO, and it says that date of invention can be extended if an inventor could prove the due diligence.

Some patent tools you must know

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Patent Library

Patent Library allows users to search by patent number and get OCR'ed PDFs of patent

documents.

Fetures: A person can get OCR'ed patent of major authorities like (JP, US, CN, EP, WO, GB, FR and DE ) and other authorities like ( CA, MX, AR, CL, IL, OA, DD, NO, SE, CH, AT, DE, BE, IE, IT, ES, NL, LU, RU, SU, UA, MD, HU, CZ, CS, HR, SI, LT, LV, MC, and DZ).

MaxVal free IP tools

Maxval-ip give a variety of free patent tools which can improve your searching. some of them are

Claim Chart Generator

Claim Set Comparison Tool

Patent Family Tree

Foreign Filing Fee Calculator

IPSCORE

IPSCORE is a free patent valuation tool from esp@cenet. It is one of the best free patent valuation tool available. According to some attorneys its accuracy is about 80% of the original value of the patent. So if you are inventor and just want to know what your patent might worth, this free tool can help you to know the potential of your invention.

Sample Landscape reports

2012-07-15T18:14:00.005+05:30

Patent Landscape Report on Desalination Technologies and the Use of Alternative Energies for Desalination

click here to get report

Patent Landscape Report on Solar Cooking

click here to get report

Exceptions and Limitations of the Rights of patent - Top countries

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USA

1. Solely for uses reasonably related to the development and submission of information under the Federal law which regulates the manufacture, use or sale of drugs and veterinary biological products, other than those products primarily manufactured using certain genetic manipulation techniques.
2. Certain uses concerning foreign vessels, aircraft or vehicles which temporarily or accidentally enter national territory.
3. As regards business method patents, continued use by a person who in good faith, had put the invention into practice at least one year before the filing date (priority date) and commercially used it before that date.

Japan

1. Non-commercial use.
2. Use for experiment or research purposes.
3. Vessels and aircraft passing through Japan.
4. Products existing in Japan before the filing date (priority date).
5. Preparation of patented medicines by mixing two or more medicines in accordance with the prescription of physicians or dentists, and medicines so prepared.
6. Non-exclusive license available as of right in the case of prior use or working of the invention prior to the filing date (priority date).
7. Compulsory licenses.

India

1. The grant of a patent is subject to the following conditions:
(a) importation or manufacture of articles and uses of processes by, or on behalf of the Government for its own use;

(b) importation of medicines and drugs by the Government for its own use or for distribution in dispensaries, hospitals or other medical institutions maintained by, on behalf of or specified by the Government;

2. Act of making, constructing, using, selling or importing a patented invention solely for uses reasonably related to the development or submission of information required under any law that regulates the manufacture, construction, use, sale or importation of any product.

3. Importation of patented products from a person who is duly authorized under the law to produce and sell or distribute the product.

4. Compulsory licenses.

United Kingdom

1. Acts which cannot be prevented by the patent owner under provisions of the Community Patent Convention relating to exhaustion of the rights.
2. Private acts for non-commercial purposes.
3. Acts for experimental purposes.
4. Preparation of prescribed medicines in pharmacies, and acts concerning those medicines.
5. Certain uses concerning foreign ships, aircraft, hovercraft or vehicles which temporarily or accidentally enter national territory.
6. Use by farmers of harvested plant propagating material for multiplication or propagation on own holding.
7. Use by farmers of breeding stock or other animal reproductive material for own agricultural activity, but not sale for commercial reproduction.
8. Continued prior use by a person who, in good faith at the filing date (priority date), had used the invention in the United Kingdom, or made effective or serious preparations for that purpose.
9. Exploitation, by a government department or other person authorized by the Secretary of State, in particular for the purposes of defense, medicines, atomic energy, war or other emergency.
10. Compulsory licenses.

China

1. Acts concerning products put on the market in China by, or with knowledge of, the patent owner.
2. Continued prior use by a person who, before the filing date (priority date), used the invention in China, or had made effective and serious preparations for that purpose.
3. Certain uses in respect of foreign means of transport which temporarily enter national territory.
4. Use for scientific research and experimentation purposes.
5. Use or sale of products obtained from a legitimate source but made and sold without authorization of patent owner. 6. Compulsory licenses.

The Scope Of Background Section

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For the patent filing in US, it is good practice to minimize the amount of information provided in the Background section of a patent application.
The field of invention section is very important as if you leave this field broad , the scope can be interpreted to include more art than is actually applicable, thereby opening the patent application to obviousness rejections. an if u leave that field defined narrowly, then the associated claims may be interpreted too narrowly.
The related art in the background section is also very critical as in case of US describing any related art may get applicant into trouble. While I will sometimes list references, I recognize the risk of describing the contents of a reference in that the description may misrepresent the scope of the reference, potentially leading to accusations of intentionally misleading the examiner. Therefore, I often describe the prior art in general terms, without explicitly delineating related art references.

It have come to know that in some countries it is necessarily to include prior art references in the Background section in response to an examiner request, and this can still be done in a revised Background section that was originally relatively short.
I personally think that minimizing the content of the Background section in US patent applications. What are the readers’ experiences and opinions?
Please share your views in comment section.

Searching prior art with the help of Inventor, assignee and Classification

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Searching through the relevant keywords is safest approach for locating relevant prior art as there is a very high chance of finding prior art, but it is not the best approach. There are chances that some of the prior art may have been missed because of the different patent language or short description.

There are some other strategies that a good patent searcher should work out on. some of them are to use Inventors, assignees and Classifications, first of all shortlist all the closest patents you have found till date and then find their inventors, assignees and classifications (IPC, US, F terms etc). You can add some of the assignees by simply searching for the companies which are active in that field.

Use this search engine for searching relevant US classes and use TACSY for searching relevant IPC classes. Once you have the list of Inventors, Assignees and Classifications you are ready to search.

PS: Make at-least one query which is only based on classification, and don't forget to check for the NPL that those inventors have published. You might find something interesting.

PCT VS The Paris Convention

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Some advantages of the PCT are:

A single application can be filed in the applicant’s home country, in the local language.

It delays (by up to 18 months) the need to make a firm decision about the countries where patent protection is to be pursued.

The PCT International Search Report (ISR) often can help applicants determine how likely it is that the application will proceed to grant in individual countries after national phase entry.

Even accounting for the additional cost of the PCT application, slightly lower costs for national phase entry as compared with direct filings means the PCT route for more than a

couple of countries can actually be cheaper overall.

Typical PCT Procedure:

Advantages that only direct filings (Paris Convention) can offer:

Sometimes fast grant of the patent is desirable. The sooner an application is filed in an individual country, the sooner it can be examined. Direct filings can often proceed to grant significantly faster than those going by the PCT route.

The PCT covers over 130 countries, including the vast majority of major commercial destinations. However, there are a few notable non-PCT countries, including Taiwan and Argentina. If you want coverage in those, it will be necessary to file directly using either the Paris convention (or – as may be the case with Taiwan – an equivalent bilateral agreement with the applicant’s country, assuming one exists).

With the PCT, applicants must draft a single patent specification that takes into account the different legal requirements of all countries. While formality issues aren’t such a problem, there may be situations where an applicant would prefer different content to file in, for example, Europe and the USA. The sorts of problems that such different content would seek to avoid tend to be industry specific; for example, different approaches to information technology and pharmaceutical patents in certain jurisdictions may make it difficult to provide a “one size fits all” specification that is perfectly tailored to all jurisdictions.

Novel approach to locate prior art

2012-07-01T21:11:00.004+05:30

Locating close prior art provides a critical edge in patent litigation or licensing, by documenting that the patent in question should not have been granted due to anticipatory (102) or obviousness (103) art. However, the prior art defense is contingent upon successfully locating such art. as most law firms have discovered, there is a wide range of outcomes when a prior art search is commissioned. this is dramatically evident when a Joint defense Group commissions 3 searches and compares the results, only to find that while they purport to cover the same materials, the outcomes are dramatically different.

The challenge of assessing the quality of a search is difficult, since attorneys have no way of knowing what critical findings were missed. consequently, they tend to rely on proxies to gauge the quality of a search, e.g. the number of findings uncovered, the total number of databases reviewed, length of the search report, etc. However, there is no evidence that any of these factors correlate with search integrity.
The stakes are high since attorneys make major decisions based on their assessment of the prior art uncovered and perceived search coverage. typical decisions include:

— Patent acquisitions involving millions of dollars, based on a search report indicating that the patent is solid;

— litigation, where defendants incur huge liability exposure and a serious professional tab (e.g. $3-$5 million) at trial where the outcome may turn on the strength of the “uncovered” prior art;

— litigation initiated by plaintiffs against competitors based on a prior art assessment trumpeting their patent’s strength;

— Myriad licensing demands

It is essential that the searcher have in-depth knowledge of the subject matter in order to conduct an effective search. In a typical search, the prior art may be described using a broad range of terminology, or may be disclosed in an exhibit. a searcher with knowledge of the technology is able to flag important sources as relevant while they may be missed by the “generalist.”

Search Implementation plays an important role in a successful search. this factor is illustrated by the common occurrence of a Joint defense Group authorizing three parallel search efforts that yield wide differences in results. What you see defines perceptions of the relevance of a reference, as well as the likelihood a critical document will be uncovered. this impact is quite subtle, for a searcher can cover the most critical patent classes, yet miss the most relevant art due to the search implementation.

The decision to cover international sources involves an important bet on where to focus the prior art search. Since it is prohibitively expensive to cover many international regions, a rational means is needed to limit the coverage.

For example, a search covering flash memory technology must cover Japanese art and Korean art, given the important role played by Toshiba and Samsung. German and other european patent art is a rich trove for cases involving video encoding, broadcasting, or automotive electronics. an international search must also keep in mind that these are First-to-File regions, where companies train their technical staff to file patents while tightly limiting publishing articles. For this reason, the patent art tends to be more fertile than literature. In contrast, academics and research institutes are more likely to publish articles than file patents.

Grace Period : Top Patent Offices

2012-07-01T16:51:00.001+05:30

United States of America

Disclosure not to be taken into consideration in determining novelty and inventive step if it occurred within one year before the filing date in the form of:
1. inventions patented or described in a printed publication in the US or abroad;
2. public use or on sale in the US.

India

An invention shall not be deemed to have been anticipated by:
1. Disclosures at any time before the filing date (priority date) of matter obtained from, and published without the consent of, the inventor or his successor in title (provided that the invention was not commercially worked in India, otherwise than for the purpose of reasonable trial, and that a patent application for the invention was filed in India or a convention country as soon as reasonably practicable thereafter).
2. Other applications made in contravention of the rights of the inventors or his successor in title or public use or publication of the invention without the consent of the inventor or his successor in title by the applicants of such other applications or by any other person in consequence of the disclosure.
3. Disclosures due to the communication of the invention to the Government or to any person authorized by the Government to investigate the invention or its merits, or for the purpose of that investigation.
4. Disclosures within 12 months before the application is made (calculated from the opening of the exhibition or the reading or publication of the paper) by:
(a) display or use of the invention with the consent of the inventor or his predecessor in title at an industrial or other exhibition notified in the Official Gazette;
(b) publication of the invention in consequence of such display or use;
(c) use of the invention during the period of the exhibition without the consent of the inventor or his predecessor in title;
(d) description of the invention in a paper read by the inventor before a learned society, or published with his consent in the transactions of such a society.
5. Disclosures within one year before the filing date (priority date) by public working the invention for reasonable trial, by or with the consent of the applicant or his predecessor in title.

Japan

1. Disclosure not to be taken into consideration in determining novelty and inventive step if it occurred within six months before the filing date:
(a) by the person having the right to obtain a patent conducting an experiment, making a presentation in a printed publication or through electric telecommunication lines, or making a presentation in writing at a scientific body study meeting held by a scientific body designated by the Commissioner; (b) against the will of the person having the right to obtain a patent;
(c) display of the invention by the person having the right to obtain a patent at a prescribed national or international exhibition.
2. The applicant shall submit:
(a) awrittenstatementtothateffectwiththeapplication;
(b) proof, within 30 days of the filing date, that the disclosure was in respect of the invention (in the case of 1(a) and (c) above).

France

1. Disclosure not to be taken into account in determining novelty if it occurred within six months before the filing date due to:
(a) an evident abuse in relation to the applicant or his predecessor in title;
(b) display of the invention by the applicant or his predecessor in title at an official or officially recognized international exhibition.

2. The applicant shall declare at the time of filing that the invention has been so displayed, and furnish proof to that effect within a prescribed time limit.

China

Disclosure not to be taken into account in determining novelty if it occurred within six months before the filing date by: 1. display of the invention at an international exhibition sponsored or recognized by the Chinese Government;
2. making the invention public at a prescribed academic or technological meeting;
3. any person without the consent of the applicant.

United Kingdom

1. Disclosure not to be taken into account in determining novelty if it occurred within six months before the filing date due to:
(a) matterdirectlyorindirectlyobtainedunlawfullyorinbreachofconfidencefromtheinventor;
(b) display of the invention by the inventor at an international exhibition.

2. The applicant shall state, when filing the application, that the invention was displayed, and furnish written evidence within a prescribed time limit.

Exclusion From Patentable Subject Matter: Japan & UK

2012-07-01T16:43:00.004+05:30

Japan

1. Inventions contrary to public order, morality or public health.
2. Methods for the treatment of humans.

United Kingdom

1. Discoveries, scientific theories and mathematical methods.
2. Literary, dramatic, musical and artistic works.
3. Aestheticcreations.
4. Schemes, rules and methods for performing mental acts, playing games or doing business. 5. Computer programs.

6. Presentation of information.
7. Therapeutic, surgical and diagnostic methods for treating humans or animals. 8. Inventions contrary to public policy or morality.

9. Plant and animal varieties and essentially biological processes for their production, other than:
(a) microbiological methods and products;
(b) inventions whose technical feasibility of the invention is not confined to a particular plant or animal variety;
(c) products consisting of or containing biological material;
(d) processes producing, processing or using biological material;
(e) biological material isolated from its natural environment or produced by a technical process, even if previously occurring in nature.
10. The human body, at any stage of its formation and development or the simple discovery of its elements, including gene sequences, other than elements isolated from the human body or produced by a technical process.
11. Processes for cloning humans; modifying the germ line genetic identity of humans; uses of human embryos for industrial or commercial purposes; and processes for modifying the genetic identity of animals which are likely to cause them suffering without any substantial medical benefit, and animals resulting from such processes.

Patent infringement

2012-07-01T02:28:00.000+05:30

infringement constitute of illegal manufacturing, using or even offering for a sale or selling any patented invention within the country or its territories without proper license, or importing it into the country of any patented invention during the term of the patent protection.

Protection against Infringement may vary from country to country, as the patent is examined voluntarily by the patent office established in each country or region and may have some difference in patentability, so that a granted patent is difficult to carry out worldwide. In many countries, a use is mandatory to be commercial or to be for a commercial purpose so as to constitute infringement.

When infringement takes place, the filing agent may sue for its relief by Patent drafting in the concerned Federal court. The Patent filing agent may also ask court for a ban to prevent the continuation of the patent infringement and may also ask the court for reimbursement of damages occured due to the patent infringement.

Patent Infringement and its Claims

In such case, the suspect may question the genuineness of the patent, which is then judged by the court. The litigant may also try to prove that what is being done does not constitute any infringement. Infringement is judged primarily by the language of claims of the patent and, if what the suspect or litigant is making does not fall within the language of any of the claims of the patent, there is no literal infringement. Suits of infringement of patents abide by the rules of procedure of the courts.

In case of the United States Government if it infringes a patent, the Patent filing agent has to reimburse for damages in the United States Court of Federal Claims. The Government can use any patented invention without taking permission of the patentee, but the patentee is entitled to obtain compensation for the use by the Government.

The US Patent Office has no area of authority over questions relating to infringement of patents. In examining patent infringement analysis, no assurance is made as to whether the invention pursued to be patented infringes any prior patent. An improvement invention can be patented, but it might infringe a prior unceased patent for the invention improved upon, if there is any.

Exclusions from Patentable Subject Matter - India

2012-07-01T02:07:00.004+05:30

The exclusion from Patentable Subject Matter for India Patent Office are:

1. Inventions which are frivolous or obviously contrary to well established natural law.
2. Inventions use or commercial exploitation of which is contrary to law or morality or causes serious prejudice to human, animal, or plant life or health or to the environment.
3. Discoveries of a scientific principle or formulation of an abstract theory or discovery of any living thing or non- living substance occurring in nature.
4. Mere discovery of a new form of a known substance which does not enhance known efficacy, or the mere discovery of any new property or new use for a known substance or of the mere use of a known process, machine or apparatus unless such known process results in a new product or employs at least one new reactant.
5. Substance obtained by a mere admixture resulting only in the aggregation of the properties of the components thereof or a process for producing such substance.
6. Mere arrangement or re-arrangement or duplication of known devices each functioning independently in a known way.
7. Agricultural and horticultural methods.
8. Any processes for medicinal, surgical, curative, prophylactic , diagnostic, therapeutic or other treatments of humans or any process for a similar treatments of animals or plants to render them free of disease or increase economic value.
9. Plants and animals in whole or any part thereof other than microorganisms, but including seeds, varieties and species and essentially biological processes for production or propagation of plants and animals.
10. Mathematical or business method or a computer program per se or algorithms.
11. Literary, dramatic, musical or artistic work or any other aesthetic creation whatever.
12. Mere scheme or rule or method of performing mental act or method of playing game.
13. Presentation of information.
14. Topography of integrated circuits.
15. Invention which, in effect, is traditional knowledge or which is an aggregation or duplication of known properties of traditionally known component(s).
16. Inventions relating to atomic energy.

Prior art definition: Top Countries

2012-06-30T18:24:00.000+05:30

United States of America

1. An invention which was known or used by others in US, or patented or described in a printed publication in US or a foreign country, before the invention by the applicant;

2. An invention which was patented or described in a printed publication in US or a foreign country or in public use or on sale in US, more than one year before the filing date;

3. An invention abandoned by the applicant;

4. An invention which was patented, or was the subject of an inventor's certificate filed by applicant or his legal representatives or assignees in a foreign country more than 12 months prior to the filing date;

5. An invention which was described in a published US patent application by another or in a patent filed by another before the invention by the applicant (for the PCT international applications, only if they designate US and are published in English language);

6. During the course of interference, another inventor establishes that, before the invention date, he/she invented the invention and not abandoned, surpressed or concealed the invention; or another inventor made the invention in US before the invention date and he/she had not abandoned, surpressed or concealed the invention.

Japan

1. Anything which, before the filing date (priority date), was publicly known or worked, published, or made available to the public through electric telecommunication lines.
2. Contents of certain Japanese patent and utility model applications with an earlier filing date (priority date).

India

Publication in any document or used in India or elsewhere in the world before the filing date (priority date).

Australia

1. Information from documents made publicly available or information made publicly available through doing an act before the filing date (priority date), whether in Australia or elsewhere.
2. For deciding whether an invention is novel, information contained in a subsequently published Australian patent application (including all international applications) with an earlier filing date (priority date), if the information was also contained in the application at its filing date.

Canada

1. Everything available to the public before the filing date (priority date).
2. Contents of Canadian patent applications with an earlier filing date (priority date).

China

1. Public disclosure in any publication, or anything which has been publicly used or made known to the public in China by any other means, before the filing date (priority date).
2. Contents of subsequently published Chinese patent and utility model applications with an earlier filing date (priority date).

France

1. Everything made available to the public by a written or oral description, use, or in any other way before the filing date (priority date).
2. Contents of French patent applications and European and international patent applications designating France with an earlier filing date (priority date) published on or after that date.

United Kingdom

1. Everything made accessible to the public by a written or oral description, use or in any other way before the filing date (priority date).
2. Contents of UK patent applications with an earlier filing date (priority date) published on or after that date.

Are patent text and images Copyrighted?

2012-06-30T17:27:00.003+05:30

There is a debate over this topic that text and images of patent are subject of copyright protection. I have researched over this and found out that the answer to this debate is no.

Copyright: Copyright is a form of protection provided to the authors of "original works of authorship" including literary, dramatic, musical, artistic, and certain other intellectual works, both published and unpublished. The 1976 Copyright Act generally gives the owner of copyright the exclusive right to reproduce the copyrighted work, to prepare derivative works, to distribute copies or phonorecords of the copyrighted work, to perform the copyrighted work publicly, or to display the copyrighted work publicly.

Patent: A patent for an invention is the grant of a property right to the inventor, issued by the Patent and Trademark Office. The term of a new patent is 20 years from the date on which the application for the patent was filed in the United States or, in special cases, from the date an earlier related application was filed, subject to the payment of maintenance fees.

The text of patent is made by research and references the inventor has cited with little or no modification from the prior art, hence their text and images can not be copyrighted. There is disclosure part in patent body which is subjected to copyright.

Non Patent Databases (free)

2012-03-26T02:14:00.000+05:30

There are lots of commercial Non patent Literature databases available in the market but for the smaller companies doing the searching related to patents its tough to buy these databases as they are already have paid a lot for the patent databases like Micropatent, Thomson Innovation, QPat, Delphion, WIPS Global, Derwent and others.

They need some good and reliable Non Pantent Databases that can compliment their search and also are free. So some of the sources i liked most are

FreefullPDF.com

Google scholar

scitopia.org

IP.com

scirus.com

Though they give results most of the time free but sometimes you have to pay for the articles. Its sometime good when u find very good result and it is visible in its abstract..