8th international fto forum
TRANSCRIPT
Developing & Executing a successful Developing & Executing a successful and cost-effective FTO search Strategyand cost-effective FTO search Strategy
Emma KoncewiczPG Cert and MSc (IP Law), MSc
May 20118th International FTO forum
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AgendaAgenda
1. Constructing your FTO search strategy
3. Mining down to the relevant data
5. Machine-Assisted Translations (MATs), how useful are they?
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Constructing your FTO search strategyConstructing your FTO search strategy
Section 60 PA 1977
Identify relevant patent filings
Scope of patent claims
where patent protection exists
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Constructing Your FTO search strategyConstructing Your FTO search strategy
• Know your invention
• Read around the science
• Talk to the inventors– Identify competitors – Identify patent holders
• Talk to experts in the field
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MRC’s Watson and Crick
astonished the world
with the discovery of the
structure of DNA
Constructing Your FTO search strategyConstructing Your FTO search strategy
•Know your database
– Not all databases work like google
•May need to amend your strategy accordingly
DB: A
DB: B
E.g. ABC-1
ABC-1 X
ABC1 4
ABC?1 20
ABC-1 20
ABC1 20
ABC?1 20
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Constructing your FTO strategyConstructing your FTO strategy
What type of search to perform?
- Keywords
- Chemical nomenclature
- Indexing
- Sequence © MRCT
CB1 receptor
Constructing your FTO strategyConstructing your FTO strategy
Keyword: Strategy languageKeyword: Strategy language
• Boolean Operators
» AND» OR» NOT» NEAR
Which one to use?
A AND B Results contain both terms
A OR B Results contain either term
A NOT B Specifically excludes a term
A NEAR B Can be defined by a numberAnd more limiting than AND
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Constructing your FTO strategyConstructing your FTO strategy
Keyword: Strategy languageKeyword: Strategy language• Truncation
– Antibody = returns documents containing the exact Phrase
– Antibod = returns a broader set of results- Antibody- Antibodies
This can be further limited by using a ?– A ? Can also be used to allow for differences in spelling
- colo?r = returns both American and English spelling
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Constructing your FTO strategyConstructing your FTO strategy
Chemistry StructureChemistry Structure
• Keyword searches limited and not the most effective
• Markush structure (STN; Scifinder)
• Substructure search
• Reverse analysis from known compounds© MRCT
Constructing your FTO strategyConstructing your FTO strategy
IndexingIndexing
• Subscription database indexing
• IPC, ECLA, other National Patent office coding systems
• Can be useful: broad search, foreign filings
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Constructing your FTO strategyConstructing your FTO strategy
SEQUENCESEQUENCE• “A rose by any
other name..” [Shakespeare]
– A protein or nucleic acid sequence may not be disclosed by name
• Sources: SciFinder, GenomeQuest
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© 2007 CAS
LimitationsLimitations• Databases
– Free: limited scope of search (i.e. biliographical) – limit to coverage (dates; collection)– Errors in data
• Keywords– Differences in formatting and nomenclature– Care required with complex boolean based search strings
• Indexing– No standardised application
• WWW - use with care– Multiple “editors”– ranked on popularity not relevance– Information not “fixed”
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Mining down to relevant dataMining down to relevant data
• An effective search strategy will limit the degree to which you will need to do this
• Duplicate records/False hits
• Scan abstracts
• Detailed analysis begins© MRCT
Mining down to relevant dataMining down to relevant data
• What is the relevance
• What are the most recent set of claims
• Ownership
• Jurisdiction
• Patent term adjustments
Machine-Assisted Translations (MATs), Machine-Assisted Translations (MATs), how useful are they?how useful are they?
• Useful in highlighting documents of relevance at an earlier stage
• Available via Esp@cenet for a limited number of languages
• JPO – translation available for limited collection
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Machine-Assisted Translations (MATs), Machine-Assisted Translations (MATs), how useful are they?how useful are they?
Warning [Jenny Joseph]
When I am an old woman I shall wear purple
With a red hat which doesn't go, and doesn't suit me.
And I shall spend my pension on brandy and summer gloves
And satin sandals, and say we've no money for butter.
When I am old lady I will carry the crimson
With a red hat which doesn' ; T disappear, and doesn' ; T m'
adapt. And I will spend my pension on
gloves d' fine brandy and d' summer
and of the satin sandals, and say we' ; the VE no money for butter.
English
French
English
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Thank you for your attention
Any Questions?
Emma Koncewicz7th Floor Lynton House7-12 Tavistock SquareWC1H 9LT
T: +44 (0)20 7391 2769E: [email protected] W:mrctechnology.org
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Meaning of infringement
60.-(1) Subject to the provisions of this section, a person infringes a patent for an invention if, but only if, while the patent is in force, he does any of the following things in the United Kingdom in relation to the invention without the consent of the proprietor of the patent, that is to say -
(a) where the invention is a product, he makes, disposes of, offers to dispose of, uses or imports the product or keeps it whether for disposal or otherwise;
(b) where the invention is a process, he uses the process or he offers it for use in the United Kingdom when he knows, or it is obvious to a reasonable person in the circumstances, that its use there without the consent of the proprietor would be an infringement of the patent;
(c) where the invention is a process, he disposes of, offers to dispose of, uses or imports any product obtained directly by means of that process or keeps any such product whether for disposal or otherwise….
[see website for full description for section 60]
Useful links and informationhttp://www.ipo.gov.uk/patentsact1977.pdf
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http://www.epo.org/learning-events/events/conferences/pi-conference.html
http://documents.epo.org/projects/babylon/eponet.nsf/0/255D65C775150B8BC12573A3004B08F6/$File/PI_policy_en.pdf
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