1. Intellectual Property Rights
Welcome to the course ETIA10,
Patent and
Intellectual Property Rights
Lecturer: Fredrik Edman

2. Introduction to Patents cont.

3. Patent via the Patent Cooperation Treaty
Repetition
The Patent Cooperation Treaty (PCT) is an international patent law treaty, concluded in 1970.
It provides a unified procedure for filing patent applications to protect inventions in each of its contracting states. A patent application filed under the PCT is called an international application, or PCT application.
A majority of the world's countries are signatories to the PCT, including all of the major industrialised countries (with a few exceptions, including for example Argentina and Taiwan).
As of January1, 2014, there were 148 contracting states to the PCT.
Recent Accessions and Ratifications
Islamic Republic of Iran, July 4, 2013
Saudi Arabia, May 3, 2013

4. The PCT Application Process
Repetition
The international patent application process has two phases:
The first phase is the international phase in which patent protection is pending under a single patent application filed with the patent office of a contracting state of the PCT.
The second phase is the national and regional phase which follows the international phase in which rights are continued by filing necessary documents with the patent offices of separate contracting states of the PCT.

5. PCT application process
Repetition
PCT application process
The time limits shown in the figure may not always be fixed.

6. International Patent Law (cont.)

7. Let’s take a look at Asia
Source: EPO

8. Patents in Asia Did you know that
…. more than 50% of the patent applications published worldwide are written in Japanese, Chinese or Korean?
… China, Japan and Korea are among the top five patenting nations in the world?

9. Overview: Chinese Patent Law
Source: EPO

10. What types of industrial property rights exist in China?
In China, industrial property rights include invention patents, utility model patents, design patents and trade marks.

11. Chinese Patent System
The term for a "patent for invention" is 20 years from the filing date in China.
The terms for a "patent for utility model“ and patent for design are 10 years from the filing date in China.
Patents for invention are substantively examined (novelty, inventive step and industrial applicability).
Patents for utility model do not undergo a substantive examination but only a preliminary examination (compliance with formal requirements). However, in invalidation procedures the requirements of novelty, inventive step and industrial applicability will be determined.

12. What inventions cannot be patented in China?
According to Article 5 and Article 25 of the Chinese Patent Law, the following items are unpatentable in China:
any invention-creation that is contrary to the law or social morality or that is detrimental to public interest
invention-creations relying on genetic resources of which the acquisition or use is not consistent with the provisions of the laws and regulations
scientific discoveries
rules and methods for mental activities
methods for the diagnosis or treatment of diseases
animal and plant varieties
substances obtained by means of nuclear transformation
two-dimensional designs of images or colours or combinations of the two that mainly serve as indicators

13. Can computer software be patented in China?
Computer programs as such cannot be patented, but they may be protected under the Regulations on Computers Software Protection, formulated in accordance with the Copyright Law.
An invention containing a computer program may be patentable if the combination of software and hardware as a whole can actually improve the prior art, bring about technical results and constitute a complete technical solution.
Very strict regulations regarding “software-like” inventions.

14. What about business methods?
Business methods are not patentable in China.
However, even though software per se and “mental schemes and business plans” are not patentable in China, the law does in fact allow some types of software and business processes to be patented. Software or business methods which result in some type of technical advantage or solution, they may be patentable, so long as the claims and description are crafted in the right manner.

15. As a foreign applicant, do I need to appoint a professional representative in China?
If a foreign applicant, enterprise or organisation does not have a residential or business address in China, they must appoint a legally established patent agent to represent them in the patent prosecution procedure in China.

16. What language must I use for a patent application in China?
Any document submitted under the Chinese Patent Law and its Implementing Regulations must be in Chinese.
Patent Cooperation Treaty (PCT) applications can be filed in either Chinese or English. However, you must submit a Chinese translation of the application within 30 months of the priority date (extendible to 32 months subject to payment of a surcharge).

17. What about priority and provisional applications?
The priority term is 12 months from the earliest claimed priority. Multiple priorities are possible. Domestic priorities can be claimed within 12 months from the date of first filing in China. If a later application claiming domestic priority is filed, the earlier application is deemed to have been withdrawn.
It is not possible at present to file a provisional application in order to get an early filing date in China.

18. How can I challenge a granted patent in China?
The opposition system was abolished in China in The only way to a challenge a granted patent is through the invalidation procedure. Requests for invalidation can be filed at any time, even after the patent has expired.

19. Patent Procedure in China

20. Overview: Japanese Patent Law
Source: EPO

21. What types of industrial property rights exist in Japan?
Japan has patents, utility models, designs and trade marks. Applications for all of these can be filed with the Japan Patent Office (JPO).

22. Japanese Patent System
The term for a "patent for invention" is 20 years from the filing date in Japan (1995).
The terms for a "patent for utility model“ and patent for design are 10 years from the filing date in Japan (2005).
Japanese patents are subject to a prior art search and a substantive examination for novelty, inventive step and industrial applicability.
Utility models undergo a preliminary examination (compliance with formal requirements) only.

23. What inventions cannot be patented in Japan?
According to the Japan Patent Act and the JPO's Examination Guidelines for Patents, the following items are not patentable in Japan:
any invention that is liable to injure public order, morality or public health
laws of nature
scientific discoveries
inventions not using the laws of nature (e.g. economic laws, mathematical methods etc.)
inventions contrary to a law of nature
arbitrary arrangements (e.g. rules for playing a game)
mental activities
personal skills
mere presentation of information
aesthetic effects (e.g. paintings, carvings)
methods for medical treatment of the human body

24. Can computer software be patented in Japan?
Since the 2002 amendment to Article 2(3) of the Japan Patent Act, computer programms are deemed to be product inventions.

25. What about business methods?
Business methods could be patentable, if they have a technical character.

26. As a foreign applicant, do I need to appoint a professional representative in Japan?
If you do not have a residential or business address in Japan, you must appoint a professional representative registered before the patent office to represent you.

27. What language must I use for a patent application in Japan?
The option to file patent applications in English has been available to applicants since 1 July A Japanese translation must be filed with the Japan Patent Office (JPO) within 14 months (prior to April : two months) of the date of filing.

28. What about priority and provisional applications?
The priority period is 12 months from the earliest priority claimed, as stipulated in the Paris Convention. Japan has been a member of the Paris Convention since 15 July 1899.
It is not (yet) possible to file provisional specifications in Japan. This means that you will need to file the complete specification to get a filing date.

29. How can I challenge a granted patent in Japan?
The opposition system was abolished on 01 January and invalidation is thus now the only means of challenging a granted patent in Japan. Invalidation procedures can be requested by anyone at any time (even after expiration of the patent term).

30. Patent Procedure in Japan

31. Brief look at India, Korea, and Chinese Taipei
Source: EPO

32. A brief look at India, Korea, and Chinese Taipei (Taiwan)
India
Korea
Chinese Taipei (Taiwan)
Utility model patents
Patent of addition*
Yes
Protection patent /utility model
20/-
20/10
Provisional application No
Computer software
Business methods
Member PCT
Prof. representative?
No, but address in India
Filing language
Hindi and English
Korean or English but must translate into Korean
Arabic, English, French, German, Japanese, Korean, Portuguese, Russian and Spanish but must translate into Chinese
Priority?
Yes, 12m
3d party observations?
Publication
18m
Challenge granted patent?
Post-grant opposition within 12m
Invalidation procedure at any time (with integrated post-grant opposition)
Invalidation procedure at any time
* Patents of addition relate to improvements in or modifications to patented inventions. A patent of addition cannot be granted before the main patent is granted. If the main patent is revoked, the patentee may request the conversion of the patent of addition into an independent patent. Patents of addition have the same term as patents for the main invention.

33. Brief look at Patent Statistics

34. Why Patent Statistics?
Patent statistics and indicators are used to map aspects of the innovative performance and technological progress of countries, regions, companies or certain specific domains and technology fields.
The use of patent statistics for monitoring developments in the field of science and technology has been expanding rapidly over the recent past. 

35. Top Applicant (EPO)

36. Shares in Patent Applications (EPO)

37. Top Technical Fields (EPO)

38. All Technical Fields

39. Inventivness

40. Filing Numbers (EPO)

41. Filing Figures Asia

42. Top Applicatns (EPO) – Asian highlight

43. Patent Applications (WIPO)

44. Published Applications by Field (WIPO)

45. A Gold Mine of Information
Information on both on a global-, regional- and micro level.
Build business intelligence about trends, companies, countries, etc.

46. The Anatomy of a Patent

47. What does a patent/patent application look like?
The patented invention or the patent application is disclosed in a patent document that is made available to the public.

48. The Patent Front Page
Since the late 1970s a modern patent's front page has acted as a kind of title page and table of contents to a patent.

49. The Patent Front Page (cont.)
The front page of a patent shows important bibliographic data.
The bibliographic data is arranged using INID codes.

50. The Patent Front Page (cont.)
Most patent specifications will have:
Document identification number and document code.
Domestic filing data
Priority data.
Technical and classification data with the number of the edition used, any domestic classification used, title, search report, and abstract written by the applicant.
Identification of the parties - applicant, inventor, patent agent.
Designated countries - country codes for the countries where protection is requested.
Drawing - a representative drawing is often given on the published application.
However, older patents normally go straight in to the description after a few details.

51. What does the rest of the patent look like?
Abstract
Around 150 words as a search aid for other patent applications
Description
Summary of prior art (i.e. the technology known to exist)
The problem that the invention is supposed to solve
An explanation and at least one way of carrying out the invention
Claims
Define the extent of patent protection
Drawings
Illustrate the claims and description
Bibliographic information:
Who applied for the patent, who invented it, etc. - the technology class is very useful for searching (discussed later)
Abstract:
Useful to search for patents and quickly browse through search results.
Description:
Contains a full and detailed description of the invention so that others can understand and replicate it.
Claims:
Define the scope of patent protection.
Drawings:
Help with understanding and interpreting the claims and the description.

52. What does the rest of the patent look like?
Most patents and patent applications will have
Title
Technical field/ field of invention
Background
Summary of the invention
Brief description of the drawings
Detailed description of preferred embodiments
Claims
Abstract
Drawings

53. The Patent Document Title: Often a vague description of the invention.
Technical field: Broad description of which field the invention belongs to.
Background: Defines the state of art and presents the problem with the same.
Summary: Often the claims rewritten in plain text.

54. The Patent Document (cont.)
Description of the drawings: Briefly describing the drawings.
Detailed description: The detailed description of the invention and all of its embodiments.

55. The Patent Document (cont.)
Claims: Defines the scope of
protection. The most important part of the patent document.

56. The Patent Document (cont.)
Abstract: Usually placed in on the first page with the bibliographic data. Consists of around 150 words as a search aid for other patent applications.
Drawings: One or several drawings depicting the different embodiments of the invention.

57. Understanding Patent Claims
and how they are processed during the application phase.

58. Understanding patent claims A case study: The Toy ball

59. The invention A ball that is fun to use, easy to catch and looks nice.
How can you protect it from imitation?
Note:
While real patents have been used in this case study, the various steps in the procedure followed by the applicant/attorney have been adapted for the purpose of this presentation.
In this presentation the invention that we are using as an example is a toy ball. Imagine that you have invented this ball and that it is new. It consists of many plastic fibres bundled together to form the ball. This makes it fun to use, and you think it would sell well on the market. In order to protect your future investments, you need to protect the invention first. How would you go about this?
To start with you should ask yourself what the distinguishing attributes of your invention are. You might find that it is "fun to use", "looks nice", and is "easy to catch". The appearance of a product can be protected by a registered design (USA: design patent). Only technical functions such as "easy to catch" can be patented (USA: utility patent). As you know, in order to get a patent, you need to claim the invention. Let's see how that works.
"Fun to use" → cannot be protected
"Looks nice" → registered design
"Easy to catch" = technical function → patent

60. How to patent this invention: claim it!
Patent Claim: "A ball that is easy to catch."
Making a ball "easy to catch" is a technical problem. Problems cannot be patented – but specific solutions can! What is the technical feature that makes the ball easy to catch?
Patent Claim: "A ball comprising a core region and plural elastomeric filaments radiating from the core region."
You don’t want anyone circumventing the patent by replacing the ball shape with something else!
A first, naïve, approach would be to write a claim for "a ball that is easy to catch". However, this is overly broad (is it really the first ever ball that is easy to catch?) and even more importantly, it tries to protect the outcome of the invention, not the invention itself. Patents are granted for new technical solutions - problems themselves cannot be patented.
A simple description of the technical solution is shown on the slide. This claim describes HOW you achieve the goal, i.e. what exactly is new in your technical solution.
However, explicitly naming the "ball" in the patent is dangerous: What if somebody gave it the shape of, for example, a car, or an apple, or a telephone? This might circumvent the patent but could well provide the consumer with exactly the same function: A thing that can be thrown, is easy to catch and looks nice. So you want to replace the word "ball" with something more general.
3. You could, for example, replace it with the very general concept of an "amusement device". Remember our examples of patent jargon? You have now joined the ranks of people who call their inventions "a plurality of balls" or "a writing instrument".
To make sure you really know what is new about your invention (only what is new can be protected by a patent), you have to carry out what is called a "prior art search".
Patent Claim: "An amusement device comprising a core region and plural elastomeric filaments radiating from the core region."
A prior art search will show whether the invention
– as claimed – is actually new.

61. Result of the prior art search
Your patent attorney found US 3,759,518, "Foot impellent toy", which discloses a similar invention.
"… said toy having a plurality of flexible strands …"
In our example, a prior art search carried out by a patent attorney found a similar, earlier patent. It also relates to a toy and has many flexible strands fixed on a core.
Now you have to carefully analyse what is contained in that patent so that you can determine what might be new about your invention.

62. Comparison of the two inventions
Your invention
as claimed US
"An amusement device comprising a core region and plural elastomeric filaments radiating from the core region."
"A toy of a disc-like body … … including … a plurality of flexible strands radiating outwardly from said … center … having sufficient inherent rigidity to retain the pattern of a circular plane."
Not new
You find that the earlier patent actually only describes a disc-like shape, i.e. the fibres are explicitly stated to radiate in a circular plane around the core. The earlier patent also reveals that the function of these strands is to make the toy fly better and be easier to kick around. The function (the problem solved) is NOT that it can be caught easily. So the explicitly different configuration of the flexible strands in that patent yielded an explicitly stated different function. In other words:
Your invention is new because you changed the orientation of the strands from a two-dimensional plane to a three-dimensional globe and you achieved a new function with that: it is easier to catch.
Furthermore, it was not obvious to a skilled person to modify the closest prior art in the way your invention does to achieve this result.
So if you change your claims accordingly, you can still get a patent.
"… radiating in plural angularly offset planes
from the core region."
New!
Inventive step (modification yields new function of making it easier to catch)!

63. Claim to protect the invention
Claim to be filed:
"An amusement device comprising a core region and plural elastomeric filaments radiating in plural angularly offset planes from the core region."
This is the claim you might finally decide to use in your patent application.
For maximum protection against competitors attempting to circumvent your patent, you would normally file more than one claim (see next slide).

64. "comprising an annular winding
Patent claims
Inventor wants broadest possible protection
Legal requirements
limit the scope of the patent
Claims:
A wheel
The device of claim 1, comprising an annular winding of fibre in a groove
Independent claim ("a wheel")
Dependent claim
"comprising an annular winding
of fibre in a groove"
Inventors want their inventions patented in such a way that the resulting patents are difficult to circumvent. However, making very broad patent claims is risky, as there might be related prior art not known to the inventor. If a patent has only one broad claim and that claim is destroyed by existing prior art, then there is no patent protection left at all. Therefore, in practice, most patent applications have both one or more broader, independent claims and multiple narrower, dependent claims. The independent claim usually describes the invention in very general terms, to allow a broad interpretation in infringement lawsuits. The dependent claims usually describe specific ways of realising the invention that the inventor regards as economically attractive. The dependent claims refer to the independent claim and specify some further parameters that narrow down the scope of the claim.
If a broad independent claim is later found to be invalid, for example because there is prior art, then the narrower dependent claims might still be valid.
For example, an inventor might claim:
“1. A battery made out of iron and sulphur", and then
"2. The battery of claim 1 in which the sulphur is deposited as small particles on a graphite electrode.”
Even though the patent examiner, or later the courts, might find that a battery made out of iron and sulphur had been published before (i.e. that claim 1 is not valid), the inventor might still be the first to have used small sulphur particles on graphite for such a battery.
Prior art identified
by patent examiner
or competitor

65. Application filed with the EPO
Claim 1: "An amusement device comprising a core region and plural elastomeric filaments radiating in plural angularly offset planes from the core region."
Claim 2: "A device according to claim 1, characterised in that it has a substantially spherical configuration."
Claim 3: "A device according to claim 1, characterised in that the outer ends of at least some of the filaments include enlargements."
This is an example of the final claims that you might use in your patent application.
The main claim covers your invention in general terms. The dependent claims describe how you think the invention will be specifically realised: as a ball and possibly with some enlargements on the outer ends of the filaments. The enlargements improve the grip of the ball when it slides over a person's hand as they attempt to catch it.
Note: Although the enlargements are part of the original invention, they are not described in the independent claim but only as one of many protected ways of putting the invention into practice. As the inventor you know that the invention also works without these enlargements and you do not want competitors to circumvent your patent simply by omitting them. So you protect them in a dependent claim.
Apart from the claims, you also have to file bibliographic data (personal details etc.), a title, an abstract, a description and drawings.
Now we will have a look at what happens when the patent office examines the patent application and its claims.
The EPO will perform its own prior art search and then consider whether the invention AS CLAIMED is new and non-obvious.

66. Additional prior art found by the EPO
"Self-adhesive mould elements"
Patent examiners are trained to find the relevant prior art and they have a lot of experience in their technical field. So they will frequently find prior art not considered by the inventor or his patent attorney.
In our example, the examiner found the patent application shown. The claims relate to a core with elastic rods or strands attached to it. The drawings show a three-dimensional, globe-like shape (see next slide).
DE :
"Self-adhesive mould elements that are equipped with spike-like rods or bristles ... characterised by rods that are attached on a core and that are made of an elastomeric material ..."

67. The opinion of the EPO DE 3121758 Your claim:
"An amusement device comprising a core region and plural elastomeric filaments radiating in plural angularly offset planes from the core region."
Spike-like rods attached on a core, made of an elastomeric material ...
This is already shown and claimed in DE
Remember that your invention was claimed as "comprising a core region and plural elastomeric filaments radiating in plural angularly offset planes from the core region."
This is already shown in the prior patent applied for in 1982.
So the EPO will write you a letter, send you the search report and inform you that your patent application as filed would be rejected. This does not mean that your application has actually been rejected, but it does mean that if you do not amend the application or provide convincing arguments, then it most probably will be.
EPO response:
Please amend your claims if you want your invention protected!

68. Further analysis
Did the EPO overlook any important features of the invention? Applicant's reply: Amendments to the application, explanation of the relationship between the invention and the prior art How can the claims be amended to reflect the invention in such a way that it is new (considering all the prior art)?
The patent claims, as the EPO understood them, do not constitute a new invention.
So either you have to demonstrate that the claims must be interpreted differently, or you have to change them.
You are not allowed to change the invention that your application is about, but you are allowed to make the wording of the claims fit more precisely to your invention. Your invention is what you described in the description and drawings.
Check the documents found in the prior art searches:
- Does your invention have any feature NOT disclosed in the prior art?
- What are the advantages of your invention compared with the prior art?

69. Comparison of the invention with the prior artUS DE
Technical features of the invention
Core + flexible filaments
Plurality of angular planes No
Floppy filaments No
A structured analysis of your invention compared with the two documents that have been identified as relevant prior art could look like this.
To do this analysis, you need to look at the features of the inventions (how the problem is solved) and at the technical results, i.e. what problem is solved.
The following text is also written on the next slide:
Although the individual elements of the invention are known, the combination is not known.
The new combination of the technical features produces a new, unique benefit.
Given our knowledge of the prior art it is not obvious to combine the elements of the different documents to achieve these new effects -> the inventive step requirement is fulfilled!
Advantages/technical result
(floating movement)
(self-adhesive)
Easier to catch No No
Flies less far + doesn’t break things No No

70. Result of the analysis
Although the individual elements of the invention are known, the combination is not and it produces a new, unique benefit. Given our knowledge of the prior art, it is not obvious to combine the elements to achieve these new effects → the inventive step requirement is fulfilled. The claim must be amended to distinguish it from DE :
Based on our analysis of the relationship between the invention and the prior art, we can reformulate our claim in such a way that the invention as claimed is new and a patent can be granted.
Look how complicated the claim for this simple invention has become!
You now know why patent claims are often very complicated in practice. And you have also learnt how to understand them much better. It is often helpful to consider the claim as a bundle of features that together represent the invention as it is protected.
You have now substantially changed your claim compared with what you originally filed. Of course, once you have filed a patent application you cannot simply change it as you like. For example, you cannot introduce completely new elements. Rather, any change has to be supported by the document that you originally filed. In our case, we described our invention very well in the description section. Our text described all the features we have now added to the claims.
An important function of the description and the drawings during the patent application process is to support possible amendments to the patent claims (see next slide).
"An amusement device comprising a core region and plural elongate, floppy, elastomeric filaments, each having cross-sectional dimensions which are significantly smaller than its length, radiating in plural angularly offset planes from the core region."

71. The original description filed with the EPO supports the amendments to the claims
This invention pertains to an amusement device, and more particularly,
to a throwing/catching device which is especially easy to catch. One of the problems with many conventional throwing/catching devices
is that … they ... tend to bounce and … sometimes hurt to catch.
A general object of the present invention … avoiding any tendency to bounce … grasping … prevents … throwing or hitting it very far … break anything on contact. According to a preferred embodiment of the invention, …
Detailed description
Device 10 is formed with a large plurality of elongate, floppy, elastomeric filaments 12, each of which, as is clearly evident in Fig. 1, has cross-sectional dimensions which are extremely small in relation to the length of the filament. As will be more fully explained shortly, these filaments are joined in a central core region in such a manner that they radiate outwardly in a fairly uniform, dense and bushy fashion, in multiple angularly offset planes, to form a substantially spherical configuration.
Supports inventive step:
different
technical result
Different
to patent
DE312…
Those parts of the description (the original description that was filed with the original patent application) which support the changes to the claims are highlighted.
In red: This is what distinguishes the invention from the prior art found by the examiner. We are allowed to introduce this element (floppy) into the claims because we had described this in the original description.
In grey: This is what distinguishes our invention from the prior art the patent attorney had already found. We accounted for this in the original claims filed.
In green: These parts of the text can be used to support our argument that by combining the two functions which were known individually before ("floppy" and "three-dimensional globe configuration") we achieve a new technical function not achieved by the prior art.
Different
to patent
US375…

72. The patent is finally granted
Response from EPO: granted!
This patent was actually granted with the claims we just developed. You can look it up in by entering patent publication number EP

73. INID Codes

74. INID codes
The World Intellectual Property Organization (WIPO) is responsible for standards within the intellectual property area.
INID codes help to harmonise the usage and appearance of patent specifications and related material, and provide a means of conveying information without using foreign languages or scripts.
Full list and explanation of INID codes can be found at WIPO’s homepage under Standard ST.9.

75. INID codes
INID codes (Internationally agreed numbers for the identification of bibliographic data) identifies bibliographic elements in the patents specification and are usually shown in parentheses or circles.
The title page use codes to indicate either different bibliographical elements (INID codes) or the different countries or systems mentioned (country codes).
The exact usage of INID codes does vary, and the codes will not always be in the same order as given below, or in numerical order.

76. INID codes (cont.) Example: ENID Codes (10) Publication number
(12) Kind of the publication
(19) Country code or other
identification, of the
country of publication
(21) Number given to the
application
(22) Filing date of the
(51) International Patent
Classification
(71) Name of applicant
(72) Name of inventor
(84) Designated contracting states under regional patent conventions

77. INID codes (cont.) Example: ENID Codes (11) Patent number
(12) Kind of the publication
(19) Country code or other
identification, of the
country of publication
(21) Number given to the
application
(22) Filing date of the
(51) International Patent
Classification
(71) Name of applicant
(72) Name of inventor …

78. Patent Classification Systems

79. Patent Classification Systems (cont.)
(51) International Patent
Classification
(52) US Patent Classification

80. Patent Classification Systems (cont.)
Patent classification schemes are used to organise and index the technical content of patent specifications.
Patent classification schemes are constructed and maintained by and for patent examiners and their primary purpose is to help the examiners in their work.
As part of the examination process an examiner will assign patent classification codes to the specification, thus the classified collection of patent documents is growing constantly.
Using patent classification as part of a search to identify patents in a particular field can help the non-expert searcher to focus and refine his search and produce a useful set of references.

81. Patent Classification System (cont.)
There are several different classification systems
Cooperative Patent Classification (CPC)
The International Patent Classification (IPC)
ECLA
US patent classification (USPC)
British classification
………

82. International Patent Classification
The International Patent Classification (IPC) is currently used by over 70 patent authorities to classify and index the subject matter of published patent specifications.
The IPC is maintained and is administered by the WIPO.
The IPC divides patentable technology into 8 key areas:
A: Human Necessities B: Performing Operations, Transporting C: Chemistry, Metallurgy D: Textiles, Paper E: Fixed Constructions F: Mechanical Engineering, Lighting, Heating, Weapons G: Physics H: Electricity

83. International Patent Classification (cont.)
These areas of technology is divided and subdivided to a detailed level.
The IPC codes, which act as an index to the subject matter of the patent, are printed on the front page of a patent specification and are always identified by the INID code 51.
There is usually a superscript numeral indicating which edition of the IPC has been used to classify the document. e.g.

84. Introduction to the Cooperative Patent Classification (CPC)
The EPO and USPTO bi-lateral classification system

85. CPC Ability to search a unified classification system (Continued)
More refined breakdowns in many art areas yield more focused results
155,000 breakdowns in USPC vs. 200,000 breakdowns in CPC, initially
Collaborative maintenance of CPC Classification
EPO and USPTO will jointly undertake revision (reclassification) projects
EPO and USPTO will work together with other counterparts
More frequent and timely updates
Greater examiner involvement in revision projects

86. CPC compared to other systems
USPC
IPC
ECLA FI
CPC
Documents classified into system by
USPTO
IPC Union Members (61)
EPO, member states
Japan Patent Office
USPTO/EPO
Relationship to IPC
None
----
ECLA is an extension of IPC
FI is an extension of IPC
CPC is an extension of IPC
Classification
2 Standards for Classification*
Invention Information
Invention Information
Invention Information
Invention Information
Rules for classification
U.S. Classification Guidelines
IPC Guide
IPC Guide
+ Art Specific Rules
IPC Guide +
Deep Indexing with F-Terms
IPC Guide +
Art Specific Rules
Number of Subdivisions
150,000
69,000
145,000
180,000
200,000

87. CPC Sections

88. Format of CPC symbols A23G 9/0202 Note:
Complete group symbol; consists of different components
A Section (A, B, ... H)
A Class (any 2 digits)
A23G Subclass (any letter)
A23G9/ Main Group
A23G 9/ Subgroup
Note:
Documents are classified with main group and/or subgroup symbols

89. Example of a CPC classification symbol
C07D203/0214 C
Section 07
Class D
Subclass
203/00 or
203/0214
Group
Main Group (always /00)
Subgroup

90. Example of a CPC classification search

91. Example of a CPC classification search

92. Patent Searching

93. Why do a patent search??
Patents are a unique source of technical information!
Patents anticipate technical literature and commercial use:
Invention Patent Elsewhere Delay
Punched cards
Television
Jet engine
Cast iron

94. Much information only available in patents
Published elsewhere
(IEEE, Internet etc.)
Published
in patents
Approximately 80% of the information which can be found in patents is not available anywhere else in comparable detail.
Patents focus on how to make things work, while scientific articles focus on the scientific contribution.
-> Read patents as a complement to the scientific literature!
Also note that your competitors will "announce" their new products in patents if they want to have patent protection!
Source: Empirical studies.
80% found only in patents!

95. Why do a patent search?? (cont.)
25% of all R&D efforts ...
… are wasted each year on inventions that have already been invented.
Don't start your R&D until you have done a search!
Replication of R&D results costs anything up to EUR million a year in Europe alone.
The Austrian Patent Office estimates that EUR million are wasted per year in Europe, including EUR million in Austria.
The President of the Austrian Inventor Association estimates (2005) that up to of the inventors who are active in Austria work "to no avail".
The technology transfer agency ProVendis estimates that 25% all of German R&D investment is wasted by duplicating R&D already done.
-> Review the literature (including articles and patents) before you start your project.
-> Search again at project milestones: your project might have changed and other inventors might have been active too.

96. Example US-A-1833019 GB-A-2365393 Reinventing the wheel - literally
Problem: excessive wear (or even explosion) of aircraft wheels due to high acceleration when touching the ground.
Proposed solution: small pockets on the side of the tires that make the wheel spin in the wind without the need for an additional electrical motor.
Patent already applied for in 1929!

97. Solutions found in patent documents
90%
Free to use
10%
Protected
Reasons why most patent documents describe inventions that are free to use:
Application rejected/withdrawn or patent invalidated
Payment of renewal fees discontinued (owner sees no further value in the patent)
Patent has lapsed (usually after 20 years)
"Old" solutions are not necessarily "outdated".
Examples: antibiotics, superconductors, the internet (the internet was invented in 1973).
You can find many great solutions for free!

98. Why Conduct a Patent Search?
Patent searches are conducted for many purposes.
Determine if a particular invention is unique
Identify potential features for new product
Identify other possible uses for a new product
Determine independent inventors or companies currently or historically obtaining patents in a particular area
Find the patent(s) for a particular invention
Determine the state of the art in a particular area
Identify patents in a specific field for generating citation maps (a tool in determining the relative importance/value of a specific invention
Study the rate of innovation in a particular area
Determine the patent portfolio of a specific company
Determine if an invention infringes upon the intellectual property rights of others
Learn about an industry or a specific company
Search for potential solutions to design or safety problems
Identify potential licensees
To identify additional reference materials (journal articles, books, product literature) of use to those working in this area. Patents often list printed reference materials.
Identify inventors working in a certain field. …

99. Who should Read a Patent
Students
Professors
Researchers
Engineers
Scientists
Professionals
Managers
Economists
Everybody ...

100. Where do I find Patents??
On the Internet!

101. Patent databases
Espacenet – the best and esiest-to-use patent database.
US patent database – good supplement to Espacenet
Patent database - good suplement to above
Googles own patent database – good suplement to above
English synonym dictionary
English synonym dictionary

102. Searching for patents can be easy ...
Easy to use
Comprehensive (80+ countries, more than 60 million documents)
Online assistance
Free of charge
Hint: Try searching for a well-known researcher's name!
Free worldwide patent information is available at

103. … but some basic knowledge is needed!
Beware of "naïve" keyword searches such as ...
Spring
"Energy storing means"
Simple, "naïve" keyword searches have very limited effectiveness. Applicants frequently use broad concepts instead of intuitive keywords to describe their inventions, either to broaden the scope of the patent or to deliberately make it harder to find.
This and the following examples of "patent jargon" are meant to provide an amusing conclusion to the lecture. You may like to introduce them with a humorous comment, along the lines of: "We engineers like to call a spring a spring. But that's not how patent attorneys see it. Let's have a look at the language they use."

104. Patent jargon writing instrument = pen
a plurality of balls = ball bearing
electrical power source
for electronic circuits
= battery
Here are some interesting examples of patent jargon.
They give you an idea of what to expect when searching for and reading patents. They also help to illustrate the kind of difficulties you might encounter when performing keyword searches.
This and the following optional slides provide examples from the fields of
electronics
general technology
mechanical engineering
chemistry
pharmaceuticals

105. Patent jargon in general technology
Optional
Patent jargon in general technology
elongate member
= pipe, riser, cable
or optical fibre
wing
= door or window
fastening means
= nail, screw or rivet, etc.

106. Patent jargon in chemistry/pharmaceuticals
Optional
Patent jargon in chemistry/pharmaceuticals
A composition comprising water and glycerol
"comprising" = further ingredients may also be present
"containing" = further ingredients may also be present
"consisting of" = only the ingredients listed are present
These terms are used to determine whether or not other ingredients may be present in the composition. It is essential that they are used correctly.

107. Patent jargon in chemistry
Optional
Patent jargon in chemistry
A composition comprising A, B and C
= a mixture of at least A, B and C, and possibly other components
Example: A composition comprising a solution of lactic acid in alcohol/water
→ Wine!
A composition consisting of A, B and C
= a mixture in which only A, B and C are present
Example: A composition consisting of a solution of lactic acid in alcohol/water
→ Wine is now excluded, since it comprises many more products than just lactic acid, alcohol and water.
A composition consisting essentially of A, B, and C
= a mixture of A, B and C which may include further components provided they
do not negatively affect the effect of the invention
Example: A composition consisting essentially of a solution of lactic acid
in alcohol/water
→ Wine might be included if the other components in wine do not prevent the effect of the invention being obtained.

108. Patent Strategy

109. Patent Quantity vs. Quality
Determining which patents in your portfolio are important inventions and which
are supporting patents or routine solutions is key to strengthening your
litigation position, and ensuring your company’s resilience against harmful litigation.
While citation analysis and analytics can be good indicators of a patent’s strength,
the only true assessment of a patent’s overall value comes from pure human intelligence.
Source:

110. Patent Strategy Considerations
What are the company’s goals? (short & longterm)
Company’s profile
The company’s resources to be devoted to patent protection
Customer trends
Economical trends (global, regional and local)
What is your competitors doing?

111. Each Contries Patent System
The “adequacy” of the patent and legal systems including:
• considerations relating to enforcing the patent right, including costs, timing, immediate remedies, long- term remedies, availability/size of damage awards, etc.
• the current and expected future state of the patent law relevant to enforcement of the patent

112. Procurement of Patent
Costs and relative ease/difficulty of filing and prosecution
Availability of delayed examination and accelerated examination
Length of examination period
Grace periods following public disclosure v. absolute novelty
Quality of examination
Patentable and non-patentable subject matter:
• Pharmaceuticals, methods of medical treatment, etc.
• Cloned genes, transgenics
• Software
• Business methods

113. Enforcement of Patent Border Protection (customs?)
Available remedies for infringement under local law:
• Preliminary/permanent injunctions, seizure actions, border actions, availability of and amounts of/limits on damage awards, criminal/civil penalties, etc.
System(s) for dispute resolution
• Civil courts, patent courts, patent office proceedings, criminal courts, separate validity and infringement proceedings, mediation, arbitration, etc.
How long for resolution? How expensive?
Availability of and rules of discovery
Technical competence of courts
Historical level and direction of any court bias
Political/judicial climate:
• neutral or pro- versus anti- patent
• neutral or pro- versus anti- foreign patentee

114. Misc.
Others types of protection (data protection -- clinical trial data for pharma)
Availability of patent term extensions
Ability to get acceptance by conforming claims to those granted in another country
What do my investors/shareholders want?
Useful for licensing purposes?
Are there compulsory licenses?
What will the country/market look like in 5, 10, 15 years
Return on Investment

115. General Questions Where and how big are my markets for the invention?
Who is the customer?
Who is my competition?
Where are my business partners located?
Where will the product be manufactured?
Where will product be used?
Where would my competition manufacture its product?

116. End of Lectures 7 & 8