Download - Patent Search & Drafting Patent Claims

Patent Search & Drafting Patent Claims

Dr. Basavaraj Nanjawade

KLE’s College of Pharmacy,JNMC Campus, Belgaum-10

[email protected]

Dept. of PharmaceuticsPresentation; Belgaum-10March 25th, 2006

Why search patents

• Technical or content information

• Legal status

• Validity/opposition

• Competitive intelligence

• Patent family

Patent Databases

Patent databases are an excellent source for extracting patent information which cannot be

carried out at a reasonable price with conventional methods.

Valuable information

Patent databases which contain

•bibliographic data•abstracts, and/or claims or fulltext•indexing data•legal status data•graphical data

provide valuable information for following purposes

purposes

•Search for prior art before filing patent applications•Avoid infringement•Monitor patents in a given area of technology•Monitor patents by a company, university or an

individual•Locate information on a specific patent•Market analysis/statistics•Identifying technological trends•Searches for potential cooperation partners and

licensors

Advantage: Online databases

Advantages of using online-databases in acquiring patent information

time efficiencycost effectiveness

comprehensivenessup-to-date information

easily assessable information from your deskcomplete coverage on an international level

Technical or content information

• State of the art

• Patentability

• Information

Competitive intelligence

• What area is the company in?

• Who is inventing what?

Maintain a current, knowledgeable position -current intellectual property portfoliopossible patent infringementcompetitor researchmake informed business decisiondecide future research directions

Current awareness information is critical for protecting an organization’s research and marketing

endeavors

What information is needed?

The state of the art in a research areaNew literature - technical and patentNew substances - sequences, polymers,

compounds, ..

New technology/patent from key competitors

Status of known patentsNew family equivalentsNew granted patentsPost issue office actionsPatent expiry dates

Current Awareness information is useful only when

Relevant from a technical perspectiveCurrentDelivered in a meaningful way

ChallengesWhat should be monitored ?How often should the sources be checked ?Will the same literature be retrieved more

than once?How much time will this activity consume /Can the process be automated ?How should the current literature be delivered ?

PATENT NUMBER & PATENT DATETITLEINVENTORSASSIGNEE / APPLICANTAPPLICATION NUMBER & FILING DATESPRIORITY INFORMATIONINTERNATIONAL CLASSIFICATION NATIONAL CLASSIFICATIONABSTRACT

International Patent Classification (IPC)

works as a universal classification for patents

started in 1975 and periodically updated

we currently use IPC 7th Edition.

Section, Class & Group. The International Patent Classification looks like this:

A 02 J 1/00

Section Group SubGroup Class SubClass

A 47 J 27/09 includes the safety device on your rice cooker

B 63 G 11/00 covers your various aircraft carriers

US Patent Classification

US Patents are classified with 400+ main classes and thousands of subclasses.

424 / 497

Class SubClass

514/470 drugs - nitrogen bonded directly to the hetero ring

http://www.uspto.gov/web/patents/classification/

Monitoring patents of a particular company

What are the most recent patents of this company?

In what areas of technology is this company most active (answer based on its patenting activity)?

In what countries does this company tend to seek patent protection for its invention?

Have any of the company's patents expired or been reassigned to other companies or individuals?

What patent applications of this company are pending at the which patent office?

Patent search Methods

Text searchSimple searchAdvanced searchSyntax (command based)

Number search

Structure search

Patent search toolsFREE

UsptoEspacenetDepatisPAJCIPOMany more patent office sites

PAID

CASWEBDelphion Intellectual Property NetworkDialogGetThePatent.comIPOrganizer.comIP Search Engine Lexis-NexisMicroPatentPATSCANQuestel Orbit Patent DatabaseSCIFINDERShadow Patent OfficeSTNSurfIP.com

http://casweb.cas.org/chempatplus/

http://www.delphion.com/

http://www.dialog.com/

http://www.european-patent-office.org/online/index.htm

The following list of patent related web-sites is maintained by the European Patent Office as a

service to users.

Current awareness information can be obtained

Periodic searches to accesses the state of art in an area at a given time.

Automatic alerts to continuously monitor new

literature in an area of interest.

25/03/2006 Dept. of Pharmaceutics 20

Drafting patent claims


Goals of claim writing

> Covering the invention

> Should be as broad as possible

> Avoid the prior art

> No unnecessary limitations

> Define the objective or goal of the invention

> This will help avoid unnecessary limitations

> The inventors way of achieving the objective


Writing claims

> Broaden the scope of the embodiment

> Writing the generic claim

> Use enough claims to completely cover the

invention


Basics

> Specifications & claims: order

> Single sentence

> Multiple claims in logical order

> Preamble (introduction, preface)

> Avoid unnecessary limitations in preamble

> May be used to limit the invention


Transition words* Comprises (include)

* Other words can be used, but this has become

standard

* ‘Consisting’, ‘consisting essentially of’

* Excludes additional unspecified elements affecting

the basic and novel characteristics of the product

* Do not use unless required by the examiner


Body

* Laudatory statements not allowed

* Statements of advantages and purposes

* Single sentence

* Single paragraph form

* Punctuation marks separate elements

* Subparagraph forms enhance clarity


Dependent claims* Include all the limitations of the claim to which

they refer

* Introduce additional limitations

* You cannot delete, only add elements

* If broad claim is allowed, dependent claim will

automatically be allowed

* It will not be infringed by anything that does not

infringe the basic claim-P.T.O DEFINATION


Numbering of dependent and independent claims

# Dependant claim may be separated from the

independent claim

# Claim that depends on a dependant claim should

not be separated

# Run out the sequence of dependant claims before

reverting

# Make sure you need all the features of the independent claim before writing a dependant

claim, otherwise write a fresh independent claim


Multiple dependant claims# Refers to more than one preceding claims in the

alternative

# Contains all the limitations of each of the claims to

which it refers

# Multiple dependant claims cannot depend on other

multiple dependant claims


Process claim # Verbalization

# Generic and specific terms in processes

# ‘Distilling’ and ‘separating’

# Does the word require further clarification

# Sequence of steps- if not clear would cover the

steps performed in any order or simultaneously


Method and apparatus# Method claims cannot be rejected because they

disclose an inherent function of the apparatus

disclosed

# Avoid apparatus limitations in a method claim

# Materials limitations are often used in dependant

process claims


Fingerprint claims

~ Claims to a new composition which cannot be

distinguished in terms of physical or chemical

structure

~ Can be explained in terms of properties

~ X-ray diffraction, solubility, melting point

~ Test is whether the invention is distinctly claimed


Use claims ~ New use of an old product

~ Not patentable as a product

~ How do you confer patentability

~ By adding a solvent

~ By specifying proportions

~ Generally not patentable unless the composition

releases an unobvious amount of the drug or in a

unique way


Types of claims

~ Jepson type claim

~ Generic and species claims

~ If no generic claim allowable then election as

to species


Non art rejections

~ Duplicate claiming

~ Undue multiplicity

~ Old combination: over claiming

~ No longer basis of valid rejection

~ Avoid prior art in claims

~ Use Jepson format