Intellectual property defense and

Transcription

1 SMARTinMED project training session Zagreb, November 26th, 2014 Intellectual property defense and patent research Lecturer: Yuri Borgianni

2 Summary Patent fundaments What patents protect Where and when The main patent authorities Patenting procedures Who the involved subjects are Fees and costs Patent documents Structure and fields of patents Patent classifications Patent search Fields for searching patents Public databases Searching with Patentscope t Search results with Patentscope Problems with patent searching and management Sources for improving patent searching Some contents and slides have been readapted d from the material included d in: -The course Metodi e Strumenti per l Innovazione, Università degli Studi di Firenze, Italy --The Seminar Search Matters 2014, organized by the European Patent Office and held in The Hague, The Netherlands, 3-4 April

3 Patent fundaments Where? What? Exclusive rights When? Who? 3

4 What? Exclusive rights 4

5 To grant a patent or to keep a trade secret? Source: intellectual-property t l t 5

6 What? A technical finding (a product, a process): New Exclusive rights Original (non-obvious) Useful/applicable in the industry Licit Patentable 6

7 Is my technical solution not-obvious? 7

8 To learn more about patent laws and procedures in the countries of the SMARTinMED partners Croatia France Greece (more material in Greek language) Italy it/default asp?idtema=1&page=informazioni&action =readall&index=1&idtemacat=1&idcategoria=1915 Portugal Spain sobre prot eccion_de_invenciones/nacionales/ 8

9 The patent law in other countries USA: UK: uk/government/publications/the-patents-act-1977patents act Germany: _engl.pdf Russia: China: Japan: l j l il & 01 South Korea: Brazil: Morocco: Saudi Arabia: 9

10 The patent law in WIPO countries 10

11 Where? National patent tauthorities International procedures Unitary patents for more countries 11

12 National patents Source: is the timescale of a patent application-procedure 12

13 Dates Patents expire 20 years after the priority date upon the payment of maintenance fees. The period is extended up to 25 years in the pharmaceutical field 13

14 The European Patent Convention The European Patent Office (EPO) grants European patents for the Contracting States to the European Patent Convention. The EPO provides a single patent grant procedure, but not a single patent from the point of view of enforcement. Hence the patents granted are not European Union patents or even Europe-wide patents, but a bundle of national patents. Besides granting g European patents, the EPO is also in charge of establishing Search Reports (SR) for national patent applications on behalf of several patent offices. 14

15 Procedure for the European Patent Office Filing to international procedures (extension) can be made within 12 months after entering the national phase (priority date) FILING Examination Filing or Formal Requirements SEARCH Search Report (if in time) A1 (SR) 18 months A2 SEARCH A3 (SR) Expired patent Amended patent (B2) Opposition Reject Accept (B1) Request for Examination 15

16 What are these codes? The kind code is an alpha-numeric suffix which gives information about the type of patent document. Generally, A kind codes are used for applications and B kind codes are used for issued/granted patents. The following summary of the principal kind codes may be useful. European patents A1 application without search report A2 application with search report A3 search report A4 supplementary search report (code on document is A3) B1 issued patent B2 issued patent after modification US patents A granted patent (to replaced by B1 and B2 from 2001) A1 application, first publication (from 2001) A2 application, re-published (from 2001) A9 corrected application (from 2001) B1 granted ga edpatent, first publication (from 2001) B2 granted patent, second publication (from 2001) All the codes at 16

17 What is the Search Report? 17

18 More on the European Patent The European Patent Convention: C060050C376/$File/EPC_15th_edition_2013.pdf How to grant an European Patent 004b93b5/$FILE/EPO_EuroPatente13_en.pdf courses.epo.org/wbts/htgaep_en/index.htmlen/index.html Filing languages English, French, German Numbers and statistics 18

19 The Patent Cooperation Treaty (PCT) The Patent Cooperation Treaty is an international patent law treaty, concluded in It provides a unified procedure for filing patent applications to protect inventions in each of its contracting states. A patent application filed under the PCT is called an international application, or PCT application. Updated list of the 148 contracting countries 19

20 The PCT procedure Starting the national phase (priority date) 16 months 18 months 9 months if there s no national phase 12 months International SR performed by an assigned International Search Authority (e.g. EPO) Publication PCT application (any receiving office listed at int/pctsafe/en/support/easy_ro.htm) Patentability opinion Supplementary International Patent Search (not mandatory) 30 months Entering selected (other) national or regional phases International Patent Examination by the International Search Authority (not mandatory) 20

21 More on the PCT World Intellectual Property Office (WIPO) The Treaty and the dates Official Languages Arabic, Chinese, English, French, German, Japanese, Korean, Portuguese, Russian and Spanish Guide for entering the national phases int/pct/en/appguide/npindex Statistics: 21

22 Regional offices All the links of national and regional Patent authorities at: p p 22

23 The (upcoming) unitary European Patent Starting ti from the date of entry into force of the Unified Patent Court (some conditions have still to be ratified), the Unitary Patent will guarantee exclusive rights of patents in all UE27 countries with the exception of Italy and Spain 23

24 Who? The inventor corresponds to the owner (assignee) of the patent The inventor is a person (or a group of people) Its/their company owns the patent rights (assignee) Intellectual property: immutable Industrial property: can be negotiated with third parties 24

25 Something we didn t mention before: how much? Fees for a national Patent Office (e.g. Germany) These costs don t include expenditures for patent attorneys 25

26 Something we didn t mention before: how much? Fees for granting a European Patent Basic activities Fee ( ) Online filing 120 European Search 1285 Designation for all EPO countries 580 Examination 1620 Grant and printing i 915 Yearly renewal org/applying/forms fees/fees html 26

27 Something we didn t mention before: how much? Maintenance fees for some European Countries Find the fees for all the countries at 27

28 Something we didn t mention before: how much? Fees for patenting through the PCT Basic activities International filing 1330 Supplementary Search 200 Handling 200 Basic fee (CHF) All PCT and renewal fees at: 28

29 How patent documents are made Pt Patents t are structured t according to a (roughly) shared set of fields, which allow undertaking patent searches through the web. The structure includes: the title; the number, constituted by the two-digit code of the Patent authority that releases the document and a numeric string; the inventor(s) and its/their provenience; the assignee (applicant), i.e. the subject that requests/obtains the exclusive rights about the invention; usually information i about its provenience is included too 29

30 How patent documents are made priority, application and publication dates according to the followed procedures; patent class(es), which indicate the industrial or technological fields in which the invention is relevant; cited patent documents, i.e. the references useful to describe the technical problem and the state-of-the-art relevant for the disclosed solution; non-patent literature, scientific articles and/or additional documents which participate to shape the stateof-the-art for the provided technical solution; 30

31 How patent documents are made the abstract, which describes the most remarkable aspects of the invention; the figures, which help people skilled in the given industrial domain to understand how a device and/or a process works; 31

32 How patent documents are made the detailed description of the invention and the figures, which generally specifies the problem to be solved, the review of existing methods and systems that perform similar functions, the preferred embodiment of the solution in terms of being the most suitable to solve the recalled problem; the claims, which describe what is new in legal l terms and hence circumscribe the matter of exclusive rights; they are organized in main (independent) and dependant claims, whereas the latter illustrate variants of the former. 32

33 Patent families A patent family is "a set of patents taken in various countries to protect a single invention (when a first application in a country the priority is then extended to other offices)." In other words, a patent family is "the same invention disclosed by a common inventor(s) and patented in more than one country. Patent families can be regarded as a "fortuitous by-product of the concept of priorities for patent applications". 33

34 Patent families INPADOC, which stands for International Patent Documentation Center, is an international patent collection. The database is produced and maintained by the European Patent Office (EPO). It contains patent families and legal status information, and is updated weekly. 34

35 Patent classes: the IPC International ti lpt PatentClassification (mandatory for allpct authorities) i A system to cluster patentable technologies into 8 sections (A-H), further categorized into more and more detailed levels (subsections, classes, subclasses, groups, subgroups) Browse at 35

36 Patent classes: the CPC Cooperative Pt PatentClassification 36

37 Patent classes: the CPC The past European Classification (ECLA) entries are expected to grow to some entries 37

38 Patent classes: the CPC 38

39 Browsing the classifications worldwide.espacenet.comespacenet com 39

40 Browsing the classifications 40

41 Patent searching strategies State of the art prior art looking for solutions Keywords (title, abstract, description, claims) Patent classes Citations Dates and patent authorities to limit the search Competition monitoring Applicants Inventors Country of applicants/inventors Patent infringment checking legal status Search by patent number with INPADOC links Pay attention using truncated words, synonyms, antonyms and logical operators: they can make the search more powerful 41

42 Searching patents: popular public patent databases Tool Link Coverage Search flexibility Patentscope (WIPO) en/search.jsf All the main patent offices High (EPO) Worldwide Low PatFT AppFT (USPTO) O/index.html US documents Very high DEPATISnet (German Patent Office) e/e-services/depatisnet/ All the main patent offices Moderate Google Patents patent_search US, EP and WO documents Low 42

43 Patentscope for searching and organizing data 43

44 Patentscope for searching and organizing data 44

45 Patentscope for searching and organizing data 45

46 Patentscope for searching and organizing data 46

47 Patentscope for searching and organizing data 47

48 Patentscope for searching and organizing data 48

49 Patentscope for searching and organizing data 49

50 Patentscope for searching and organizing data 50

51 Patentscope for searching and organizing data 51

52 Patentscope for searching and organizing data From INPADOC 52

53 Patentscope for searching and organizing data 53

54 What commercial software can do 54

55 Notes on patent searches There is not a definitive database and a definitive strategy for performing a PI search The best thing is to combine subset of keywords and criteria at scope of restricting the analysis to subset(s) of documents deserving full reading and analysis Keyword search in indexed databases Date Patent classification Keyword search in full-text databases Inventor, applicant name Source: L. Falciola 55

56 Learning to search patents Full Patentscope guide: Espacenet online tutorial: ti / t/ i t t h EPO online training: EPO Search seminars, e.g. contents and videos of Search Matters 2014 : PatFT guide at USPTO: Last but not least: o write down how many results your patent search strategy has provided, what you expected to find and you didn t, what you didn t expect to find, but you did, the share of relevant documents o modify your search strategy according to previous results and insights: your goal is to get closer to an ideal search which includes all (and only) the pertinent results 56

57 Final recommendations Improve your patent searching skills to be aware what competitors have invented and patented, but never trust yourself when writing patents (if you are not a patent attorney ) 57

58 58

59 Patents and applications European patents These have 7 digits (e.g ) US patents Granted patents have 1 to 7 digits (e.g or ). Design patents have 1 to 6 digits which should be preceded with a 'D' (e.g. D1 or D321321). Commas are optional (e.g. D323,406 or 5,231,340). 340) Applications have 11 numbers - a 4 digit ityear then 7 futher digits it (e.g ). World (PCT) patents These can have 7, 8 or 10 digits. Early patents have a 2 digit year then 5 further digits (e.g ). Later patents have a 2 digit year then 6 further digits (e.g ). Finally, from 2004, patents have a 4 digit year then a further 6 digits (e.g ). Japanese (JP) patents These can have 7, 8, 10 or 11 digits. Applications have a 4 digit year then 7 further digits. Publications are more complicated. From 2000 they have a 4 digit year then 6 further digits (e.g ). Prior to this they had a 1-2 digit 'emperor' year followed by a further 6 digits (e.g and ). [Applications may also be found with emperor years - if so the should be converted and entered as western years.] Japanese to Western year conversion table. 59

60 US patents B2: granted patent, second publication (from 2001) 60

61 US patents 61

62 Provisional applications 62

63 Continuing patent applications The term continuation application refers to an application that is based on an original patent application (often referred to as a parent application), and has the same priority date and specification as the parent. When an application is a continuation of a parent application, it "claims priority" to the parent application. Continuation applications are often filed so that an applicant may pursue claims to inventions that were disclosed but not allowed in the parent application. In the U.S. and some other countries, there are several types of continuation applications: continuation applications (a sub-class of continuation applications),divisional applications, and continuation-in-part (CIP) applications. Source: 63

64 Continuing patent applications A continuation is a patent application filed by an applicant who wants to pursue additional claims to an invention disclosed in the parent application. The continuation uses the same specification as the parent application, claims the priority date of the parent, and generally names at least one of the same inventors as in the parent. This type of application is often filed when a patent examiner has allowed some but rejected other claims in an application, or where an applicant feels that he or she has not exhausted all useful ways of claiming different embodiments of the invention during the prosecution of the parent. A divisional application, or simply a divisional, is filed when the parent application contains more than one distinct invention. If multiple inventions are disclosed in a single application, the applicant may pursue claims to one of the multiple inventions in the parent application, and pursue the other inventions in subsequent divisional applications. The divisional applications generally have the same specification as the parent applications, claim the priority date of the parent, but have a different set of claims. In the U.S., divisional applications often result when the patent Examiner issues a restriction requirement, which limits each patent application to a single invention. Divisional applications in Europe and Australia are equivalent to a continuation application in the U.S. A continuation-in-part application (or CIP or CIP application), is an application to which the applicant has provided substantially the same specification as the parent application, but has disclosed additional subject matter that was not included in the parent. For a continuation-in-part application, claims to subject matter that was also disclosed in the parent are entitled to the parent s priority date, while claims to the additional subject matter are only entitled to the filing date of the CIP application. CIP applications are generally used to claim enhancements that were developed after the patent application was filed. For a tutorial about how to view continuity data for U.S. applications and patents, see How to View Continuity Data in PAIR. 64

65 US patents Different formats for applications, published applications and granted patents 11/ US A1 US B2 Some application refers to provisional applications 60/ The same priority can give rise (in the USA) to a plurality of applications and patents 11/874690; 11/926044; 13/ US A1; US A1; US A1 US B2; US B2; US B2 To correctly interpret application numbers: 60/ individuates provisional applications 65

66 US patents 66

67 WIPO applications 67

68 WIPO applications 68

69 EP patents Codes are necessary to distinguish EP applications and patents: -EPyyyyxxxxxx: application (more on -EPxxxxxxxA*: published application -EPxxxxxxxB*: granted patent 69

70 EP patents: the EPO Register 70

71 EP patents: the EPO Register 71

72 EP patents: the EPO Register 72

73 EP patents: the EPO Register org/regviewer 73

74 EP patents: the EPO Register 74 /register.epo.org/advancedsearch?lng=en

75 EP patents: the EPO Register 75

76 EP patents: the EPO Register 76

77 EP patents When applications are published as A2, i.e. without SR, this is published in A3 version which does not contain the whole set of data, but just bibliographic information 77

78 EP patents 78

79 EP patents B2 patents have undergone modifications in compliance with opposition procedures 79

80 80

81 How to find forward citations 81

82 How to find forward citations 82

83 83

84 smart search 84

85 advanced search 85

86 advanced search Fields are connected by the AND operator 86

87 advanced search 87

88 advanced search Database Worldwide European Patents WIPO patents Search fields Keywords in title, keywords in title or abstract, publication number, application number, priority number, publication date, applicant, inventor, ECLA class, IPC class Keywords in title, keywords in title or abstract, keywords in full text, publication number, application number, priority number, publication date, applicant, inventor, IPC class Keywords in title, keywords in title or abstract, keywords in full text, publication number, application number, priority number, publication date, applicant, inventor, IPC class 88

89 search results 89

90 search results Available fields Different versions of the same patent document that participate to form the patent tfamily 90

91 exported search results 91

92 USPTO patent search 92

93 USPTO: quick search 93

94 USPTO: advanced search 94

95 USPTO: results 95

96 USPTO: results 96

97 USPTO: results 97

98 USPTO: results 98

99 USPTO: applications 99