Patent Searching - Novelty and FTO Flashcards
Novelty Patent Searching
- Pre-filing searches
- Validity searches
- Patent Office searches
Freedom-to-Operate
What is the product?
Scoping the search?
What is the risk?
Boolean Operators
AND
OR
NOT
Goal of Semantic Searches
To produce an ordered list of relevant documents that a skilled reader would produce if they had read all of the potentially relevant documents.
Novelty - Pre-filing searches
Scoping - concept, what are the key features? Make short summary.
Guides the decision of whether to seek patent protection. Are they novel and inventive?
Guides the drafting process, tell the story, draft the claims
Novelty - validity searches
Patent Office searches.
Validity Opinions
- Is a patent that is potentially infringed, valid?
Validity Attacks
- European patent oppositions (Within 9 months of date of print)
- Invalidity claim in UPC or national court
Novelty basic search strategy:
References cited in the patent applications, as well as applicants and inventors.
- Main classes
Key features to do an initial keyword search to find:
- Further keywords
- Synonyms and spelling variations
- More relevant classes
Considerations in Novelty?
- Vocabulary issues
- Language issues
- Unusual parameters
- Searching for the irrelevant
- Bias: (A mind not willing to see an invention)
- Starting the search too soon.
Orthogonal search
Searching classification for one concept and keyword for another.
Classification based search
Use AND between classes is likely to provide highly relevant documents.
Keyword search
No clear class relating to any of the Search Concepts means Keywords must be used and combined.
Forward Citations
A forward citation is a search for patents that cite a specific patent. It’s a way to see how an article has influenced subsequent research and patents.
Backward Citations
A backward citation is a search that looks at the references in a piece of work to find what led to it. It’s a way to identify relevant patents for research.
How does the EPO conduct searches?
- Analysing the invention and constructing the search table
- Performing the search
- Evaluating the documents retrieved
Break down a classification: A61K 31/00
A: Section
61: Class
K: Subclass
31: Group
/00: Subgroup
Freedom to Operate Infringement Risk Analysis Questions for Scope of search
What is the product?
What are the essential features (which cannot be omitted or redesigned)
Does the client have any warranties on suppliers?
Where will it be sold/manufactured?
Who are the main competitors?
Are there similar products on the market?
FTO - Risk
Low - Pending PCT App
Medium - Pending App in relevant territory
High - Granted patent in relevant territory
FTO Tips
Territorial, but consider PCT
Acceptable to search for patents and appl. published in last 20 years. (extensions? Supplementary Protection Certificates?
Can they be restored?
Claim interpretation - Eli lilly, improver, catnic…
For M&A
Look at registered IP: status, territory, novelty, genuine use.
Owners, users, assignments, licences…
Landscaping in IP Snapshot of:
Technology Sector, Competitors & Strategic Position
