Patent Search Drafting Patent Claims

Dept. of Pharmaceutics Presentation; Belgaum-10 March 25th, 2006 Patent Search & Drafting Patent Claims Dr. Basavaraj Nanjawade KLE’s College of Pharmacy,JNMC Campus, Belgaum-10 bknanjwade@yahoo.co.in 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 efficiency cost effectiveness comprehensiveness up-to-date information easily assessable information from your desk complete 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 portfolio possible patent infringement competitor research make informed business decision decide 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 area New literature - technical and patent New substances - sequences, polymers, compounds, .. New technology/patent from key competitors Status of known patents New family equivalents New granted patents Post issue office actions Patent expiry dates Current Awareness information is useful only when ….. Relevant from a technical perspective Current Delivered in a meaningful way Challenges What 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 DATE TITLE INVENTORS ASSIGNEE / APPLICANT APPLICATION NUMBER & FILING DATES PRIORITY INFORMATION INTERNATIONAL CLASSIFICATION NATIONAL CLASSIFICATION ABSTRACT 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 search Simple search Advanced search Syntax (command based) Number search Structure search Patent search tools FREE Uspto Espacenet Depatis PAJ CIPO Many more patent office sites PAID CASWEB Delphion Intellectual Property Network Dialog GetThePatent.com IPOrganizer.com IP Search Engine Lexis-Nexis MicroPatent PATSCAN Questel Orbit Patent Database SCIFINDER Shadow Patent Office STN SurfIP.com The following list of patent related web-sites is maintained by the European Patent Office as a service to users. http://www.european-patent-office.org/online/index.htm 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. Drafting patent claims 25/03/2006 Dept. of Pharmaceutics 20 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 25/03/2006 Dept. of Pharmaceutics 21 Writing claims > Broaden the scope of the embodiment > Writing the generic claim > Use enough claims to completely cover the invention 25/03/2006 Dept. of Pharmaceutics 22 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 25/03/2006 Dept. of Pharmaceutics 23 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 25/03/2006 Dept. of Pharmaceutics 24 Body * Laudatory statements not allowed * Statements of advantages and purposes * Single sentence * Single paragraph form * Punctuation marks separate elements * Subparagraph forms enhance clarity 25/03/2006 Dept. of Pharmaceutics 25 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 25/03/2006 Dept. of Pharmaceutics 26 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 25/03/2006 Dept. of a fresh 27 claim, otherwise write Pharmaceutics 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 25/03/2006 Dept. of Pharmaceutics 28 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 25/03/2006 Dept. of Pharmaceutics 29 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 25/03/2006 Dept. of Pharmaceutics 30 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 25/03/2006 Dept. of Pharmaceutics 31 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 25/03/2006 Dept. of Pharmaceutics 32 Types of claims ~ Jepson type claim ~ Generic and species claims ~ If no generic claim allowable then election as to species 25/03/2006 Dept. of Pharmaceutics 33 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 25/03/2006 Dept. of Pharmaceutics 34 25/03/2006 Dept. of Pharmaceutics 35