Freedom-to-operate search

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1 Freedom-to-operate search Question Do patent rights exist on which a given product risks infringing? Infringement, Clearance and Freedom to Operate Search Alex Riechel Project Coordinator Cebu and Manila 7-11 March 2011 Target Existing claims of patents currently in force existing active claims Subject matter that may appear in claims of patents entering (or re-entering) into force in the future future active claims Future active claims: Document types and elements Claims in patent applications Claims in patents lapsed or withdrawn reinstatement Description in patent applications amended claims Description in patents amended claims Non-patent literature grace period Future "active" claims: Geographical considerations Domestic patent documents Foreign patent documents Paris Convention (TRIPS Agreement) PCT regional agreements Patent lifecycle: Domestic priority Patent lifecycle: Foreign priority First disclosure Priority date Start of patent term First disclosure Priority date Start of patent term Grace period Time to start of patent term Patent term Term extension Grace period Delay to domestic filing Time to start of patent term Patent term Term extension Patent documents: Priority date from the present to the maximum possible period Non-patent documents: Publication date from the present to the maximum possible period Foreign patent applications Non-patent documents 1

2 Patent lifecycle Tip Patent term In many countries, patents can remain in force for a maximum of 20 years from their priority date. Longer patent terms may be permitted in some countries (for patents filed or granted before a certain date). Different conditions for calculating maximum patent terms may be applied in some countries (for patents filed or granted before a certain date). Patent term extensions Extensions to patent terms may be granted under certain conditions or for specific types of technologies (e.g. supplementary protection certificates for medicinal products). Limitations by date should only be set where absolutely necessary If it is absolutely necessary to set date limitations, be generous in setting the limitations Better to review too many documents than to miss a single relevant document. Caution! Tip Publication of patent applications generally occurs with some delay after the priority date (typically 18 months). Future "active" claims are unsearchable during this time After filing an application, applicants may disclose their inventions in non-patent literature. Non-patent documents may indicate the content of unpublished patent applications. Freedom-to-operate search: Limitations Freedom-to-operate search Document type: Patent and non-patent* Document elements: All* Subject area: All Country or region: All* Time period: All* Languages: All Classifications: IPC and others Source Concepts embodied by a product (features, functions, problems solved) 2

3 Caution! Inventive concepts: Examples Any inventive concept embodied by the product may be patented. By deciding which aspects of a product to include in the search, we are implicitly deciding that all other features of the product could not be patented (do not belong to patentable subject matter or do not fulfill patentability criteria). A few aspects of a product that might be inventive include: Each individual component and any combination of components as embodied in the product Functions of each component and combinations of components (including of the product itself) a known component in a new function might be considered inventive! Means or methods of producing each individual component or combinations of components (including of the product itself) Example : Motor Caution! A product consists of many elements that may be protected by different intellectual property rights (and other legal rights), not only patents. marks (e.g. distinctive markings or coloring) industrial designs (e.g. decorative elements) copyright (e.g. user manual) Any part or combination of parts might be claimed in a patent All different types of rights should be reviewed in order to minimize the risk of infringement. Exercise Retrieve information related to a company's freedom to operate with respect to the following product. Product Working Principle : Snowpulse backpacks have an airbag inside the shoulder straps as well as a compressed air cylinder inside the pack. In the event of an avalanche, pulling the handle inflates the airbag in 3 seconds. The inflated airbag lifts an avalanche victim to the surface of a slide and helps protect the wearer from trauma to the head, spine, and chest. 3

4 Remember! Preparation phase Any part or combination of parts might be claimed in a patent. Example : Define limitations on the search Identify the concepts to be searched Generate synonyms Search for appropriate classifications Identify other means of representing the concepts to be searched Limitations: Theoretical Limitations: Practical Document type: Patent and non-patent* Document elements: All* Subject area: All Country or region: All* Time period: All* Languages: All Classifications: IPC and others Document type: Patent only Document elements: All Subject area: All Country or region: US and content of PATENTSCOPE search service Time period: All* (US from 1976 to present) Languages: English only Classifications: IPC only Preparation phase Concepts: Problem Define limitations on the search Identify the concepts to be searched Generate synonyms Search for appropriate classifications Identify other means of representing the concepts to be searched Snowpulse backpacks have an airbag inside the shoulder straps as well as a compressed air cylinder inside the pack. In the event of an avalanche, pulling the handle inflates the airbag in 3 seconds. The inflated airbag lifts an avalanche victim to the surface of a slide and helps protect the wearer from trauma to the head, spine, and chest. 4

5 Concepts: Problem Concepts: Structure avalanche Snowpulse backpacks have an airbag inside the shoulder straps as well as a compressed air cylinder inside the pack. In the event of an avalanche, pulling the handle inflates the airbag in 3 seconds. The inflated airbag lifts an avalanche victim to the surface of a slide and helps protect the wearer from trauma to the head, spine, and chest. Concepts: Structure Concepts: Function backpack airbag shoulder straps cylinder compressed air handle Snowpulse backpacks have an airbag inside the shoulder straps as well as a compressed air cylinder inside the pack. In the event of an avalanche, pulling the handle inflates the airbag in 3 seconds. The inflated airbag lifts an avalanche victim to the surface of a slide and helps protect the wearer from trauma to the head, spine, and chest. Concepts: Function Preparation phase inflate airbag lift surface protect trauma head spine chest Define limitations on the search Identify the concepts to be searched Generate synonyms Search for appropriate classifications Identify other means of representing the concepts to be searched 5

6 Tool: InterActive Terminology for Europe (IATE) IATE: Results Tool: Wikipedia Wikipedia: Results Problem: Synonyms Problem: Search syntax (PATENTSCOPE) avalanche: valleyward snow, snow slide, snow slip, snow flow, buried in snow, suffocated under snow (1) avalanche* OR ((flow OR flows OR slide OR slides OR slip OR slips OR valleyward OR buried OR burial OR suffocat*) NEAR snow) Boolean operator: OR Proximity operator: NEAR (within 5 terms distance) Wildcard operator: * (unlimited characters) 6

7 Structure: Synonyms Structure: Search syntax (PATENTSCOPE) backpack: knapsack, pack-bag, pack-can, rucksack, sack, bag, baggage airbag: air bag, air cushion, flexible envelope, life preserver, life vest lifejacket, life jacket, life belt, floatation suit, floatation device shoulder straps cylinder: tank, bottle, container, vessel air: gas compressed: pressurized, pressurised, under pressure handle: grip, cord (1) backpack* OR knapsack* OR "pack-bag*" OR "pack-can*" OR rucksack* OR sack OR sacks OR bag OR bags OR baggage (2) airbag* OR "air bag*" OR "air cushion*" OR "flexible envelope*" OR "life preserver*" OR "life vest*" OR lifejacket* OR "life jacket*" OR "life belt*" OR "floatation suit*" OR "floatation device*" (3) "shoulder strap*" (4a) cylinder* OR tank OR tanks OR container* OR vessel* OR bottle* (4b) "compressed air" OR "compressed gas" OR "air pressur*"~3 OR "gas pressur*"~3 (5) handle* OR grip OR grips OR cord OR cords Function: Synonyms Function: Search syntax (PATENTSCOPE) inflate: blow up, pump up airbag: air bag, air cushion, flexible envelope, life preserver, life vest lifejacket, life jacket, life belt, floatation suit, floatation device lift: buoy, float surface: top, up, vertical protect: conserve, cushion, insulate, preserve, safeguard, save trauma: concussion, collision, blow, crash, crush, impact, injury, jolt, shock, wound head: cranium, skull spine: backbone, spinal column, vertebrae, vertebral column chest: rib, thorax, upper body, upper trunk body (1a) inflat* OR "blow up" OR "pump up" (1b) airbag* OR "air bag*" OR "air cushion*" OR "flexible envelope*" OR "life preserver*" OR "life vest*" OR lifejacket* OR "life jacket*" OR "life belt*" OR "floatation suit*" OR "floatation device*" (2a) lift* OR buoy* OR float* (2b) surface OR top OR up OR vertical* (3a) protect* OR conserv* OR cushion* OR insulat* OR preserv* OR safeguard* OR save OR saving (3b) trauma OR concussion* OR collision* OR blow OR blows OR crash* OR crush* OR impact* OR injur* OR jolt* OR shock OR shocks OR wound* (3c) body (3c') head OR cranium OR skull (3c'') spine OR backbone OR "spinal column" OR vertebrae OR "vertebral column" (3c''') chest OR rib OR ribs OR thorax OR "upper body" OR "upper trunk" Preparation phase IPCCAT (backpack) Define limitations on the search Identify the concepts to be searched Generate synonyms Search for appropriate classifications Identify other means of representing the concepts to be searched 7

8 IPCCAT (backpack) IPCCAT (backpack): Results A45F Travelling or camp equipment; sacks or packs carried on the body A45C Purses; luggage; hand carried bags PATENTSCOPE (backpack) PATENTSCOPE (backpack): Results PATENTSCOPE (backpack): Results PATENTSCOPE (backpack): Results B65D Containers for storage or transport of articles 8

9 TACSY (backpack) TACSY (backpack): Results TACSY (backpack): Results IPCCAT (airbag) A45F Travelling or camp equipment; sacks or packs carried on the body A45C Purses; luggage; hand carried bags B63C 9/00 Life-saving in water B60R 21/00 Life-saving in water Classification (airbag) PATENTSCOPE (compressed air cylinder): Results F17C Vessels for containing or storing compressed, liquefied, or solidified gases; fixed capacity gasholders; filling vessels with, or discharging from vessels, compressed, liquefied, or solidified gases 9

10 Classification Search phase backpack: A45C, A45F, B65D airbag: A62B, B60R 21/00, B63C 9/00 compressed air cylinder: F17C Search by element (combined) Search by reference Search by name Search by element (combined) Caution! Backpack only Airbag only Air cylinder only Avalanche only Airbag + avalanche Backpack + airbag In freedom-to-operate searches, combine elements only to the extent absolutely necessary to restrict the number of results to be evaluated. High recall - Increasing precision Backpack + airbag + air cylinder Target USPTO PatFT/AppFT Current active patents PatFT: Granted patents (US) Future active patents AppFT: Patent applications (US) PATENTSCOPE: Patent documents (international) 10

11 Target Search PatFT (airbag only) Current active patents PatFT: Granted patents (US) Future active patents AppFT: Patent applications (US) PATENTSCOPE: Patent documents (international) Search PatFT (airbag only): Results Search PatFT (airbag only, IPC) Search PatFT (airbag only, IPC): Results Search PatFT (airbag + avalanche) 11

12 Search PatFT (airbag + avalanche): Results Search PatFT (airbag + avalanche, IPC only) Search PatFT (airbag + avalanche, IPC): Results US Patent 7,878,141: Airbag system for use in an avalanche Target Search AppFT (airbag + avalanche): Results Current active patents PatFT: Granted patents (US) Future active patents AppFT: Patent applications (US) PATENTSCOPE: Patent documents (international) 12

13 Search AppFT (airbag + avalanche, IPC) Search AppFT (airbag + avalanche, IPC): Results US patent application 10/992,942: Jacket and method for surviving and avalanche Target Current active patents PatFT: Granted patents (US) Future active patents AppFT: Patent applications (US) PATENTSCOPE: Patent documents (international) Search - PATENTSCOPE (Airbag + avalanche) Search - PATENTSCOPE (Airbag + avalanche): Results 13

14 European patent application EP : Inflatable anti-avalanche garment PCT patent application WO/2007/050024: System and method for protecting a bodypart Search phase Patent family PCT (WO/2007/050024) Search by element (combined) Search by reference Search by name Patent family PCT (WO/2007/050024) Patent family (WO/2007/050024) 14

15 Patent family (WO/2007/050024) Patent family (WO/2007/050024) Patent family (WO/2007/050024) Patent family (WO/2007/050024) Patent family (WO/2007/050024): Results Patent family (WO/2007/050024): Results 15

16 Search phase Search PATENTSCOPE (Snowpulse) Search by element (combined) Search by reference Search by name Search PATENTSCOPE (Snowpulse): Results Search - PATENTSCOPE (Snowpulse): Patent family - PCT Post-search phase Evaluate results Evaluate results Analyze results Report results Sort results Clearly relevant results Potentially relevant results Do not judge results based on title alone: Carefully read the claims (and the description) Avoid discarding results entirely: Let the client decide whether the information is relevant or not 16

17 Post-search phase Analyze and report results Evaluate results Analyze results Report results What is the priority date of the document? Are the features contained in the claims? Are the features contained in the description? What is the current legal status of the document? Indicate sources and date as of which information is valid (date on which information was collected) Online patent register: USPTO PAIR USPTO PAIR: US patent 12/091,278 USPTO PAIR: US patent 12/091,278 USPTO PAIR: US patent application 12/091,278 17

18 USPTO PAIR: US patent application 12/091,278 Caution! Information provided through online patent registers may not be fully complete or up-to-date Always verify information obtained through online patent registers with the respective patent office before making any legal decision 18