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TRANSCRIPT
How to Research Patent Information
Michael White
Engineering & Science Library
January 11, 2016
Expanding Horizons Workshop Series
Topics
Introduction to patent information
What is a patent?
Finding patent documents
Number
Translations
Inventor/Company
How to search patents by technology
3
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
2.7 million applications filed in 2014
100+ million patent documents in existence
1.18 million patents granted in 2014
10.2 million patents in force in 2014
Top patenting countries:
China, Korea, U.S., Europe, Japan
9
Source: WIPO World IP Indicators, 2015
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
12
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
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
16
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
17
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
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
21
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
24
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.
26
Photos: Michael J. White
BR Brazil
CA Canada
CN China
DE Germany
EP EPO
GB Great Britain
MX Mexico
US U.S.
A Patent, 1st pub.
B Patent, 2nd…
C Patent, 3rd...
P Plant patent (US)
S Design patent (US)
T Translation
U Utility model, 1st
Y Utility model, 2nd
Number Format
27
Canada vs. U.S.
28
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
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
31
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)
35
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
37
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
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
Generate Keywords
Bicycle =
Bike, cycle, velocipede…
Folding =
Foldable, collapsing, collapsible, compactable, extensible
Power system =
Pedal, crank
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