Patent Search - a Technical Approach - Dr. Prithipal Singh Patent Office, New Delhi

Transcription

1 Patent Search - a Technical Approach - Dr. Prithipal Singh Patent Office, New Delhi CII-DIPP National IPR Awareness Campaign Indore, January

2 Talk Plan Patent and Patentability Novelty Novelty Search Search Strategy Performing Search Refining the Search Search using Classification Summary and Important Tips Dr. Prithipal Singh 2

3 Got an Inventive idea? If you have an invention or inventive idea What do you do? Publish a Paper Start Manufacturing Protect your idea Apply for a Patent Dr. Prithipal Singh 3

4 What is a Patent? PATENT is a monopoly right conferred by the state to a person in consideration for exclusive use of the invention For a limited period (20 years). It falls into public domain after expiry of the term Patent is a territorial right i.e. it is applicable only within the country PURPOSE: to encourage innovation, industrial growth Is a statutory right In return inventor has to disclose the invention to public Dr. Prithipal Singh 4

5 Patentability THREE CRITERIA Novelty Inventive Step Industrial Application Patent Search is conducted to establish Novelty of the invention Dr. Prithipal Singh 5

6 Novelty Novelty mean that the subject matter SHOULD NOT BE PUBLISHED IN INDIA OR ELSEWHERE IN PRIOR PUBLIC KNOWLEDGE OR PRIOR PUBLIC USE WITH IN INDIA CLAIMED BEFORE IN ANY SPECIFICATION IN INDIA A Novel subject is not part of state of the art. (state of the art comprise product, process, information in public domain) Dr. Prithipal Singh 6

7 Novelty Search Novelty is determined before inventive step because the creative contribution of the inventor can be assessed only by knowing the novel elements of the invention The Novelty Search is conducted to see whether the invention is anticipated by any prior art What is the scope and content of the prior art? Differences between the claims and the prior art? For Novelty, all the features from the independent claim should be described in a single document. (In other words, prior publication or activity must contain the whole of the invention impugned) Clear instructions, illustration or unmistakable direction necessary. Dr. Prithipal Singh 7

8 Establishing Novelty Manual Search Electronic Search Build a Strategy Dr. Prithipal Singh 8

9 Search Strategy What is a search strategy? Planning how to look for information. A well designed search strategy: Saves time Allows search in many different databases Helps find relevant information Dr. Prithipal Singh 9

10 How to develop a search strategy? Finding the focus Identifying key concepts Defining key concepts Finding alternative terms Performing search Refining the search To find relevant information you need to focus on what is being claimed. Think about what you need to find by concentrating upon the spirit of the invention. Dr. Prithipal Singh 10

11 Identifying key concepts Breaking down the query into its key parts. Concepts or parts can be later on combined by using the Boolean operators. Lets Consider the following invention A multiple-element antenna with parasitic coupler for a wireless mobile communication network The concepts in the blue circles should be included in the search statement. Rest should be kept in mind and should not be included in a search statement. Dr. Prithipal Singh 11

12 Finding alternative terms Synonyms (antenna aerial - transmitter) (mobile telephones - cellular telephones) Spelling variations (antenna - antennae) Variations of a root word (transmit transmitter transmission) (multi - multiple) Plural/singular forms (network - networks) Acronyms (GSM, CDMA) Dr. Prithipal Singh 12

13 Performing Search After all the said prerequisites go for a search. Search can be performed at : (US Patent and Trademark office) (European patent Office) (WIPO PCT Resources) (Japan Patent Office) (intellectual property office of Singapore) Dr. Prithipal Singh 13

14 Searching at USPTO Dr. Prithipal Singh 14

15 Search Box Dr. Prithipal Singh 15

16 Search Result Dr. Prithipal Singh 16

17 Refining the Search If the Search did not yield desired information. Review the search terms, to either broaden or narrow down the search. To broaden your search (i.e. to increase the result you find) reduce number of terms/concepts you are using. use an OR operator look for alternative terms. use more general search terms. To narrow your search (i.e. to reduce the result you find) use AND or NOT search look for more specific alternative terms use full subject headings as search terms remove any truncation Dr. Prithipal Singh 17

18 Refine Search Dr. Prithipal Singh 18

19 Search Result Dr. Prithipal Singh 19

20 Dr. Prithipal Singh 20

21 Searching at WIPO Dr. Prithipal Singh 21

22 Searching at EPO March 16, 2007 Dr. Prithipal Singh 22

23 Searching at Surfip Dr. Prithipal Singh 23

24 Search using Classification Dr. Prithipal Singh 24

25 IPC Classification It divides technology into 8 Sections These 8 Sections are further divided into sub-divisions i.e. Class, group, etc. Pinpoints the field of search in the available patent database. Thus, helpful in retrieval of relevant Patent information. Dr. Prithipal Singh 25

26 Structure of Classification SECTION CLASS SUBCLASS MAIN GROUP SUBGROUP Dr. Prithipal Singh 26

27 SECTION Dr. Prithipal Singh 27

28 CLASS Dr. Prithipal Singh 28

29 SUBCLASS Dr. Prithipal Singh 29

30 Group & Subgroup Dr. Prithipal Singh 30

31 To perform classification based search Step 1: Classify the invention. Step 2: Go to the relevant field in the patent database for classification search i.e. for the present case, search for: H01Q 1/24 Step 3: short list relevant documents Step 4: Analyze the novelty in the short listed documents. Dr. Prithipal Singh 31

32 Classification based search Dr. Prithipal Singh 32

33 Dr. Prithipal Singh 33

34 Summary Important Tips for relevant searching Be specific about what you are looking for Familiarize the keywords and concepts using background information i.e. Dictionary, reference books etc. Divide the query into concepts for searching Think about & look for alternative search term Review the strategy and refine the results --THANK YOU-- Dr. Prithipal Singh 34