Introduction to Patent Research

Michael White

Engineering & Science Library

March 31, 2015

Expanding Horizons Workshop Series

Topics

Introduction to Patent Information

Finding Patent Documents

Number

Translations

Inventor/Company

How to Conduct a Patentability Search

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Patent History

The first patent granted in Canada was issued to Samuel Hopkins for an improved method of making potash (potassium carbonate). When was it granted?

A. 1791

B. 1824

C. 1869

Bonus: What other “first” is Hopkins famous for?

Why are Patents Important?

Business: Pfizer lost $14 billion in revenue as key drug patents expired .

Research:Medical and Technological innovations

Source: Globe and Mail, 2006-2007.

Why Patents are Useful

Legal protection for an inventor/company

Deter piracy, infringement

Encourage investment in new businesses/products

Disseminate information about new technologies

Identify new technologies and research trends

Identify new applications for old technologies

Locate research that isn’t published in journals

• Find solutions to technical problems

• Identify potential partners, suppliers and competitors

• Identify potential employers; prepare for job interviews

Knowledge Sharing

“Fostering and supporting invention and creativity through knowledge sharing” (CIPO mission statement)

“By disseminating both patent and trademark information, the USPTO promotes an understanding of intellectual property protection and facilitates the development and sharing of new technologies worldwide”. (USPTO website)

TrademarkName and logo

Industrial DesignShape, ornamentation

PatentConstruction

Trade SecretMaterial composition

CopyrightProduct photos, product literature, marketing ads, website, etc.

Image: Crocs, Inc., 2010

Patents Today

2.5 million applications filed in 2013

80+ million patent documents in existence

1.17 million patents granted in 2013

9.45 million patents in force in 2013

Top patenting countries:

China, Korea, U.S., Europe, Japan

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Source: WIPO World IP Indicators, 2014

10

What is a Patent?

A patent is a right granted by a government to an inventor for a limited time

Patent owners may exclude others from making, using, selling or importing into a country a patented invention or any product made using a patented process

Limited monopoly (20 years)

Provided maintenance fees are paid

Enforceable only in the country of issue (no such thing as an international patent)

May be sold, licensed, etc.

Patentability Criteria

Patentable subject matter

Novelty, non-obviousness

Has the invention been used in public, sold or published anywhere in the world?

Is it obvious to someone of average skill in the art?

Usefulness

Does it perform a useful function?

Full disclosure

Enough detail so that someone of average skill in the art could understand invention?

No secret ingredients or black boxes

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Patentable Subject Matter

13

New processor method, e.g. method of making a chemical substance

New chemical or biological substance, material or alloy

New machines

New Designaka Design Patentaka Industrial Design

Products

Can you patent a steak?

Source: http://vegasstripsteak.com

WO/2013/048839

Possibly Allowable (Depending on Local Patent Laws)

Genetically modifiedplants and animalsUS: YesCanada: microbes only

Computer Implemented Inventions (software)US: YesEurope: Yes, with conditionsCanada: In future?

Surgical, medical or therapeutic techniques

Improvements

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Symmetrical Pleated SkirtUS 6282723 (2001), US 7131147 (2006)

Steve Villegas, Seattle, WA

Photo: Utilikits / www.utilikilts.com

Maple Baseball Bat ConstructionCA 2344077, US 6050910 (2000)

Sam Holman, Ottawa, ON

Image and TM: Sam Bat / www.sambats.com

New Uses of Known Materials

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Animal Feeds Containing AspirinUS 3147120 (Sept. 1, 1964)

“It has been unexpectedly discovered according to the present invention, that when aspirin is admixed in small concentrations to animal feeds beneficial results are obtained, particularly in respect to faster growth…”

Acetyl Salicylic AcidUS 644077 (Feb. 27, 1900)

CaseUS D506,476US D469,109

ControllerUS D497,367US 2003/009096WO03036642

User InterfaceUS 2004/0055446

Carrying CaseUS D475,850US D476,149

Patents

Credits: Copyrights and Trademarks, Apple, 2005. 18

Patent Documents

19

Legal Document

A patent defines the rights granted by a government to an inventor.

Technical Document

A patent teaches a new and useful way of solving a problem, making a substance or device, performing an action, or an innovation on an existing invention.

patentschrift

patent

Zhuan li

brevet

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INID Codes

International Agreed Numbers for the Identification of (bibliographic) Data

International effort in the 1960s to standardized patent documentation

Defined under WIPO Standard ST.9

First included on U.S. patents on Aug. 4, 1970

Identified by

parentheses (21)

square brackets [21] prior to Jan. 1, 2001

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Exercise: Patent specification

http://worldwide.espacenet.com

80+ million patent documents 90+ countries and regions 2 million non-patent literature documents Patent status and family information Save and print multi-page documents (up to

~500 pages) in PDF format Translations

Image: European Patent Office, 2011

Patent Numbers

Application number

Serial number assigned to an application when it is rec’d by a patent office

Priority number

Number assigned to the first application filed by an applicant on the basis of which subsequent applications are filed by the same applicant for the same invention or concerning the same patent right

Publication number

Number assigned to a application when it is published (generally 18 months after filing)

Issue number

Number assigned to a granted patent

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Where do we see patent numbers?

Journal articles (cited references)

Heikki, U.S. patent 104,345, 1998.

Products and packaging

Advertisements

Product manuals

Newspaper articles, press releases

Literature databases – Web of Science, Chemical Abstracts, BIOSIS

Books…

25

Look for patent numbers on product packaging, labels or the product itself. If number is not present, look for the manufacturer’s name.

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Photos: Michael J. White

BR BrazilCA CanadaCN ChinaDE GermanyEP EPOGB Great BritainMX MexicoUS U.S.

A Patent, 1st pub. B Patent, 2nd…C Patent, 3rd...P Plant patent (US)S Design patent (US)T TranslationU Utility model, 1stY Utility model, 2nd

Number Format

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Canada vs. U.S.

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CA 2,420,311 A1 CA 2,420,311 C2,420,31110/098,445

09/867,829 US 2002/0008588 A1 US 6,483,388 B260/212,999

PriorityApplication

Application(unpublished)

Published App./Laid-open App.

Patent

12 months 6 months

6 months12 months

? months

? months

Example

CA 367104 (Bombardier)

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Managed by the European Patent Office

80+ million patent documents

90 countries and regional offices, incl. US and CA

2+ million non-patent literature references

Updated weekly

DE10123553

Map: WIPO PCT Yearly Review, 2007

Priority Document

CA 2188581

International Application(PCT)

WO 9529056 A1

EP 0757623 B1

US 5899841 A

JP 3546240 B2

AU 689877 B2

CN 1062214 C

PCT Member Countries

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Translations

Locate a patent family member

Use Espacenet’s machine translation

English

Chinese

German

French

Spanish

Who can be an inventor?

A sweeping device with two headsSamuel T. Houghton, (Age 3, Briston, UK)GB2438091 (2008)

Model train controller using electromagnetic field between track and ground.Neil Young (Musician)US5441223 (1995)

Inventor Searches

• Identify key innovators in a field

• Locate collaborators / competitors

• Compile bibliography of an inventor’s work

• Find patents associated with a product

• Steve Jobs -> iPod device

• Dean Kamen Segway transporter

• Stephanie Louise Kwolek Kevlar

Mike Lazaridis, co-founder and former CEO of RIM; inventor of the BlackBerry smartphone.

Photo: Research in Motion

Name Search Tips Initials:

• K. R. Sridhar (Bloom Energy)

Name variations:

• Susan Smith, Susan Smith-Jones

Nicknames:

• Burt Rutan = Elbert Rutan

• Harry Steenbock = Harold Steenbock

Non-English names:

• Mike Lazaridis

• Misspellings

• Nanba Namba

• Translations

• Sipadun Resources -> Sparton Resources (CN1948527)

36

Distributed under license from Delta of Sweden

Company Search Tips Nicknames:

• RIM = Research in Motion

• IBM = International Business Machines

Inventor names (small or start-up companies):

• Michael Vulpe (i4i)

Name changes and spin-offs:

• Nortel Northern Electric Northern Electric & Manufacturing

• 3M Minnesota Mining and Manufacturing

• Novelis ALCAN

Mergers and Acquisitions

• Lucent = Alcatel-Lucent

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Patent classification codes appear on patent documents and in patent database records.

Codes also present in some NPL databases (INSPEC).

Patentability (Novelty) Search

A comprehensive search of prior art in order to determine the novelty and non-obviousness of an invention

Usually conducted prior to filing a patent application

Prior art includes all publically available technical and nontechnical publications, such as:

Patent documents

Journals, conference proceedings, dissertations, etc.

Product brochures, magazines, web sites

Catalogues, books, manuals

Things to Remember

A patentability search is not a legal opinion – Only a patent professional can give you a legal opinion about the patentability of your invention

Duty to Disclose - Applicants may be required to disclose known prior art in their applications or at any time during the examination

U.S. = Required

Canada = Voluntary, but CIPO may request prior art cited in corresponding US and European applications

Europe = Voluntary

No guarantees – Just because you find no relevant prior art does not mean your invention is patentable

Document Your Search!

Date of search

Database(s) searched

Keywords searched

Classification codes searched

Search results

Patents reviewed

Download copies of patents of interest

Koosh Ball

Image: OddzOn Products, 2006.

Patent Titles

Patent titles and abstracts are often written in language that is broad, vague or technical:

Toy Ball:

Generally spherical object with floppy filaments to promote sure capture

Mousetrap:

Rodent extermination device

Problems with Keyword Searching

• Patents are written in many languages:

Bicycle, vélo, fahrräder, bicicleta, 自転車

• Product names don’t appear in patents

iPad

• Synonyms, spelling variations, abbreviations

Tire vs. Tyre (British)

Mouse (animal) vs. mouse (computer device)

• Specialized terminology, e.g. chemical names

• Search only title and abstract

Uses of Patent Classification

Facilitate access to technological and legal information contained in patents

Retrieval of patents by concept

Explore the state of the art in given fields of technology

Provide a basis for selective dissemination of patent information (search alerts)

Preparation of patent statistics (patinformatics)

USPTO Patent Search Room, c. 2000

Industry or use (papermaking)

Structure (chemical compound)

Proximate function (heat exchange)

Effect or product (telephone system)

Describe the Invention

Write a brief but accurate description of the invention

Sketches are helpful

Note key features

Extract keywords and synonyms

Dictionaries and thesauri are helpful

A folding bicycle that is fun to ride and is easy to carry and looks cool.

Photos: YikeBike, Ltd., New Zealand

“Fun to ride” Not patentable

“Looks cool” design patent

“Portable & folding” = Technical function patentable

“Pedal crank” = Technical function patentable

A Human necessitiesB Performing operations;

transportingC ChemistryD Textiles; paperE Fixed ConstructionsF Mech. Eng. G PhysicsH Electricity

International Patent Classification

Section

Class

Subclass

Group

B

K

15/00

~80,000 codes

B62K 15/00

62

IPC codes are printed on virtually all patent documents published today. (100+ patent offices)

BICYCLES B62K brakes for BICYCLES B62Lpropulsion for BICYCLES B62Mtransmissions for BICYCLES B62M

1. Catchword Index

B62K CYCLES B62K 15/00 Collapsible or foldable cycles

2. Schedule

2. Search

WIPO, May 2012

Generate Keywords

Bicycle =

Bike, cycle, velocipede…

Folding =

Foldable, collapsing, collapsible, compactable, extensible

Power system =

Pedal, crank

Search keywords

Collaps* or Fold*

Bike or Bicycle or Cycle

Rack or Carrier

Bike or Bicycle

Collaps* or Fold*

Common Mistakes

Fail to record search steps and results

Select inappropriate search tool

Search engine vs. patent database

Limit search to issued patents

Limit search to a single country

Limit search by date

Search only keywords

Be a Skeptic! If your initial search fails to find any

relevant patents, you have probably done an incomplete search.

Return to the beginning of the search process and rethink your keywords and classifications.