Freedom-to-operate search
Question
Do patent rights exist on which a given product risks
infringing?
Infringement, Clearance
and Freedom to Operate
Search
Cebu and Manila
7-11 March
2011
Alex Riechel
Project Coordinator
Future “active” claims: Document types and
elements
Claims in patent applications
Claims in patents lapsed or withdrawn Æ reinstatement
Description in patent applications Æ amended claims
Description in patents Æ amended claims
Non-patent literature Æ grace period
Patent lifecycle: Domestic priority
First disclosure
Priority date
Target
Existing claims of patents currently in force
Æ existing “active” claims
Subject matter that may appear in claims of patents
entering (or re-entering) into force in the future
Æ future “active” claims
Future "active" claims: Geographical
considerations
Domestic patent documents
Foreign patent documents
Æ Paris Convention (TRIPS Agreement)
Æ PCT
Æ regional agreements
Patent lifecycle: Foreign priority
First
disclosure
Start of patent term
Grace period
Time to start
of patent term
Patent term
Term extension
0
1
2
3
Patent documents: Priority date from the present to the maximum
possible period 1 + 2 + 3
Non-patent documents: Publication date from the present to the
maximum possible period 0 + 1 + 2 + 3
Priority date
Grace
Delay to
period domestic filing
0
1
Start of patent term
Time to start
of patent term
2
Patent term
3
Term extension
4
Foreign patent applications
Non-patent documents
1
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
Æ 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).
Æ Future "active" claims are unsearchable during this time
After filing an application, applicants may disclose their
inventions in non-patent literature.
Æ 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
Caution!
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).
Example : Motor
Inventive concepts: Examples
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)
Æ 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)
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
Exercise
Retrieve information related to a company's freedom to
operate with respect to the following product.
Æ All different types of rights should be reviewed in order
to minimize the risk of infringement.
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
Remember!
Any part or combination of parts might be claimed in a
patent.
Example :
Limitations: Theoretical
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
Preparation phase
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
Preparation phase
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: Practical
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
Concepts: Problem
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
Concepts: Problem
avalanche
Concepts: Structure
backpack
airbag
shoulder straps
cylinder
compressed air
handle
Concepts: Function
inflate
airbag
lift
surface
protect
trauma
head
spine
chest
Concepts: Structure
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
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.
Preparation phase
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
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
Structure: Synonyms
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
Function: Synonyms
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
Æ body
Preparation phase
Structure: Search syntax (PATENTSCOPE)
(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: Search syntax (PATENTSCOPE)
(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"
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
IPCCAT (backpack)
IPCCAT (backpack): Results
A45F
Æ Travelling or camp
equipment; sacks or packs
carried on the body
A45C
Æ Purses; luggage; hand
carried bags
PATENTSCOPE (backpack)
PATENTSCOPE (backpack): Results
PATENTSCOPE (backpack): Results
PATENTSCOPE (backpack): Results
B65D
Æ Containers for storage or transport of articles
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TACSY (backpack)
TACSY (backpack): Results
TACSY (backpack): Results
IPCCAT (airbag)
A45F
Æ Travelling or camp
equipment; sacks or packs
carried on the body
A45C
Æ Purses; luggage; hand
carried bags
Classification (airbag)
B63C 9/00
Æ Life-saving in water
B60R 21/00
Æ Life-saving in water
PATENTSCOPE (compressed air cylinder):
Results
F17C
Æ 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
Classification
backpack: A45C, A45F, B65D
airbag: A62B, B60R 21/00, B63C 9/00
compressed air cylinder: F17C
Search by element (combined)
Backpack only
Airbag only
Air cylinder only
Avalanche only
…
Search phase
Search by element (combined)
Search by reference
Search by name
Caution!
In freedom-to-operate searches, combine elements only
to the extent absolutely necessary to restrict the number
of results to be evaluated.
Æ High recall - Increasing precision
Airbag + avalanche
Backpack + airbag
…
Backpack + airbag + air cylinder
…
Target
USPTO PatFT/AppFT
Current active patents
Æ PatFT: Granted patents (US)
Future active patents
Æ AppFT: Patent applications (US)
Æ PATENTSCOPE: Patent documents (international)
10
Target
Search – PatFT (airbag only)
Current active patents
Æ PatFT: Granted patents (US)
Future active patents
Æ AppFT: Patent applications (US)
Æ 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
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
Æ PatFT: Granted patents (US)
Future active patents
Æ AppFT: Patent applications (US)
Æ PATENTSCOPE: Patent documents (international)
12
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
Æ PatFT: Granted patents (US)
Future active patents
Æ AppFT: Patent applications (US)
Æ PATENTSCOPE: Patent documents (international)
Search - PATENTSCOPE (Airbag +
avalanche)
Search - PATENTSCOPE (Airbag +
avalanche): Results
13
European patent application EP1992241:
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
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
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
Æ Do not judge results based on title alone: Carefully read
the claims (and the description)
Æ Avoid discarding results entirely: Let the client decide
whether the information is relevant or not
16
Post-search phase
Evaluate results
Analyze results
Report results
Analyze and 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?
Æ 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
USPTO PAIR: US patent application
12/091,278
Caution!
Information provided through online patent registers may
not be fully complete or up-to-date
Æ Always verify information obtained through online patent
registers with the respective patent office before making
any legal decision
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