Steps to perform FTO & Challenges in conducting FTO searchBy Sathya R [Origiin IP Solutions LLP, Bangalore]

x In force/Valid patent x Year restriction x Geographical Coverage (as patent rights are territorial)

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Understanding the Invention

Background search

Split the invention in to features

Key word derivation and its synonyms/terminologies identification and IPC identification Open patent search

Devising search strategy

Analysis and Screening

Claim Mapping

Report Preparation3

How to understand the product based invention Components/Compound/source used Arrangement/ structure/composition involved Purpose Utility Advantage (additional)

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How to understand process based invention Raw material (reactant) Techniques used in process (crystallization, lyophilization) Segregate the obvious and non-obvious steps involved in the process Advantage (Economical advantage, Manufacturing advantage and yield) With knowledge of the product/process searcher should be able to find the boundary of the invention

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Help to assess the visibility and status of the product or technology Exposure on relevant literature Ongoing research studies Issues and news related to technology Competitor on the technology

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For example Wood coating by resin from pine-apple skin This invention includes two technologies: x Preparation of resin from pine-apple skin and x Resin coating method for wood FTO search for the above invention must include: ` Preparation of resin from pineapple skin or any natural extract which indirectly includes pineapple skin; ` Similar resin coating methods; and ` Preparation of resin from pineapple skin or any natural extract which indirectly includes pineapple skin and also resin coating method for wood.`

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Identify the Keywords based on the features For example: Novel feature of the invention is Pomegranate for the treatment of cancer Primary Keyword (Inventive step/Novelty Secondary Keyword (Utility/uses) Tertiary Keyword (method/way) Pomegranate Cancer Treatment

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Synonyms of the keywords (E.g. identification, detection) Other names (E.g. Aluminium , Aluminum) Technology broad classes (E.g. Metal)

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Patent classification is a code or symbol which provides a method for categorizing the invention. It is a way the examiners of patent offices or other people arrange documents, such as patent applications, disclosing inventions according to the technical features of the inventions A patent classification is fixed under an agreement among different countries. International Patent Classification (IPC) United States Patent Classification (USC) European Classification (ECLA) Internal Patent Classification of Japan Patent Office (FI/F-term)

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US Classification (USC)

Classification code is typically expressed as "482/1". 482 represent the class of EXERCISE DEVICES and the number following the slash is the subclass of invention within the class. After slash 1 represents the subclass HAVING SPECIFIC ELECTRICAL FEATURE

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A complete classification symbol of IPC comprises the combined symbols which representing the section, class, subclass and main group or subgroup. Section Class A A23 Human Necessities Foods or foodstuffs; their treatment, not covered by other classes Preserving, e.g. by canning, meat, fish, eggs, fruit, vegetables, edible seeds; chemical ripening of fruit or vegetables; the preserved, ripened, or canned products General methods for preserving meat, sausages, fish or fish products Preserving by heating

Subclass

A23B

Main group

A23B4/00

One dot sub group A23B 4/005

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The European Classification system (ECLA) is used by the EPO for conducting patent/applications searches. The ECLA classification system is an extension of the IPC. ECLA follows the IPC with the identical symbols (same classification systems) up to sub group level and then it further subdivided by ECLA subgroups represented by a letter.

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For example, A234/005F F represent the symbol which is the further subdivision of ECLA. A234/005F symbol for preserving by heating without shaping, e.g. in form of powder, granules or flakes . with gas or liquids, with or

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FI and F-term are the internal patent classifications of Japan Patent Office can be used to retrieve a variety of patent and utility model documents The patent and utility model data is stored from 1885(from the first patent of Japan) to the latest. The database for the FI / F-term search service is updated once every two weeks

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Identify the classification code based on Keywords Specific Classification Code (E.g. A23B 4/005 - preserving by heating) Broad Classification Code (E.g. A23B - PRESERVING)

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Types of Databases Government based patent databases Free patent databases Paid patent databases

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Specific Region Databases` ` ` ` `

United States Patent and Trademark Office (USPTO) http://www.uspto.gov/ Indian Patent Office (IPO) http://ipindia.nic.in China Patent Office http://search.cnpat.com.cn/ Japan Patent Office http://www.ipdl.inpit.go.jp/homepg_e.ipdl IP Australia (Auspat) http://pericles.ipaustralia.gov.au/ols/auspat/

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Multi Region database`

World intellectual property organization (WIPO) (Patentscope, http://www.wipo.int/patentscope/search/en/search.jsf) covers the patent/applications published in Patent Co-operation Treaty (PCT) which offers a patent application process that protects an invention over the global market.

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European Patent Office (espacenet) http://ep.espacenet.com/ covers the patent/applications published in most of the territory region such as US, FR (France), DE (Germany), GB (United Kingdom), WO (WIPO) etc.

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Free patents online http://www.freepatentsonline.com/ Patent lens http://www.patentlens.net/ Boliven http://www.boliven.com/ Freshpatents.com http://www.freshpatents.com/ Google Patents Geographical coverage of the above said databases varies.

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STN - http://www.stn-international.de Micropatent - http://www.micropat.com Delphion - http://www.delphion.com Questel - http://www.questel.com Patent Cafe - http://www.patentcafe.com Dolphin -http://thomsonreuters.com/products_services/science/science_products/az/dolphin

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Minesoft - http://www.minesoft.com/

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Geographical coverage Duplication removal Advanced search option (keyword, citation) Export and download Family patent Citation

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Open Google patent search helps to

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Identify the patent terminologies used in the technology IPC used in the technologies Claim language of the technology Pattern of patent under the given technology

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Search strategy is a combination of keywords with Boolean operators and truncation or wild cards to identify the patent/applications. The combination of keywords is arranged in a manner to envelop the particular technology or concept to identify the patent/applications whichever fall in the technology Search Strategy can be categorized in to three parts

Keywords Boolean operators Truncation or wild cards

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Boolean operators are used to combine multiple field searches or to combine multiple words or phrases. Commonly used boolean operators 1. AND (Laser AND diode ) 2. OR (Cloth OR fabric) 3. ANDNOT or NOT (Laser AND NOT Diode) Advanced boolean operators x (E.g. Escheria Coli )

x With or same (antibody same PPAR receptor) x Near/4 ( detection near/4 DNA)

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In order to extend the search, the truncation symbols (wildcards) can be used. There are different wildcard characters available for different databases, USPTO $- stands for a string of characters of any length Espacenet: *- stands for a string of characters of any length ? - stands for zero or one character # - stands for exactly one character WIPO (Patent Scope) *- stands for a string of characters of any length

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Pyramid like hierarchy search is one of the best methods to identify the relevant patents/applications (Narrow to Broad)

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Vital Key Terms of the given technology in the field of abstract or title

Closely relevant Patent/applications of the technology

Invention - PEGylated Recombinant modified mammalian urate oxidase E.g. Abst/((uricase or "urate oxidase") and (pegylated or "polyethylene glycol" or pegylation))

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All Key Terms in broad perspective

Patents/applications claiming the Product/technology

Invention : Waterless washing machine cleans using nylon beads E.g. aclm/((apparatus or machine) and (cleaning or washing) and (clothes or fabric or substrate)) and ((beads or particles or chip or particulate) and (polymer or nylon))

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When the completeness of key terms are unsure; then the detailed description based search is Preferred Invention : Dihydronepetalactone derived from nepetalactones which contains major constituent of catmint essential oils used as an insect repellent compound.

E.g. spec/((Dihydronepetalactone or nepetalactones$) and (catmint or catnip or Nepeta cataria )) and (insect or arthropod) and (repellent or resistant))

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Detailed Description and claim For example : spec/((Dihydronepetalactone or nepetalactones$) and (catmint or catnip or Nepeta cataria )) and (insect or arthropod) and (repellent or resistant)) and aclm/ (Dihydronepetalactone or nepetalactones$)

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Detailed Description and IPC (Specific IPC) Claim and IPC (Broad IPC) Claim and Assignee/Inventor Detailed Description and Assignee/Inventor

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The invention relates to the formation of surface treated zinc oxide and titania particles for Sunscreen formulation. In particular siloxane star-graft copolymer coating on the surface of zinc oxide and titanium nanoparticles to control the interfacial surface interactions between the particle and the oil phase of the cosmetic skin formulation.

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The surface treated particles are used in personal care formulations defined as cosmetic or dermatological preparations for skin care, hair care, foot care, sun care, oral care, baby care, toiletries, colour cosmetics, personal cleaning, and topical human sunscreens.

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Citation is the prior art consisting of patent/applications pertinent to the particular patent. Citation is made by the patent owner with the explanation how the invention claims differ from the prior art. Such citations shall be entered in the patent file.

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Cited reference is the prior art referred by patent/application. Citing reference is being referred by patent/application. For example, patent A is the prior art which is referred by patent B and patent B is the prior art for patent C. In this case, patent A is the cited reference for patent B and patent C is the citing reference for patent B.

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Citation analysis helps to` `

Identify the evolution of technology identify the whole patent portfolio of the technology in an effective and time consuming manner

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Major player of the technology In view of FTO, citation analysis provide easier way to identify the broad class of prior art of the given invention

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Citation information is available in most of the Paid databases such as micropatent, delphion etc Some of the free database like` `

Freepatentsonline Espacenet

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Search query will be reformulated several times; Record of search strategies with hits helps to remove duplication and provide clarity on strong keyword or search query which provide maximum relevant patents x Search strategies should be recorded x Identified Patent Hits need to be combined x Databases used to search also need to be record

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There are three types of patent/application available in the search hits x Irrelevant patent x Suspected relevant patent x Relevant Patent

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First stage of analysis is to screen whether the patent/application need to be consider for further analysis

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Eliminate the irrelevant patent from the hits Segregate the relevant and suspected relevant patents

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The patent is considered to be relevant if any one claim or part of the claim is matched with one or more than one features of the given invention

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List the relevant patent separately The patent is considered to be suspected relevant when it claims discuss about the same function with related product of the given invention or similar function in combination with broader technology class of the given invention.

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Detailed description need to be review for suspected relevant patent to ensure the claim loop detailed description risk of infringement

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Family patent Claims of the suspected relevant patent needs to be reviewed Finalize the relevant patents

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Single patent application filed in different region to protect the invention in different territorial region is called family patent

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Difference in law, makes the difference in the content of single patent application in different region (E.g. Process and product) .

Source of Family patent information 1. Most of the paid databases like Delphion, Micropat,STN etc. 2. Free patent databases like Espacenet, Patent lens.

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Data on legal status of a patent is an important component of patent information because it is used to determine:` ` ` ` `

whether examination of a patent application is still pending, or whether the application has been withdrawn or was abandoned; whether a patent has been granted and is still valid, or whether a granted patent has expired, lapsed, or been revoked. Whether any change in the ownership

By referring a patent's legal status, one can determine if a patent is in force, abandoned, expired, or had a change in ownership.

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The Espacenet provides free service on patent legal status data. Legal status codes indicate assignment changes, abandoned applications, restoration of patent protection, and requests for examination, expirations, PCT designations, rejections, and dozens of other pre- and post-grant actions.

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USPTO provides the legal status and assignment history of US patent/applications. Unlike to Espacenet, USPTO has two independent sections for legal status and assignment history.

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Assignment history contains the ownership or assignee history of the patent/applications which include the changes in assignee of the patent/applications. Patent Application Information Retrieval http://portal.uspto.gov/external/portal/pair

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The assignment history of the US patents/applications can be checked at: Patent Assignment Query Menu http://assignments.uspto.gov/assignments/?db=pat

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http://www19.ipdl.inpit.go.jp/PA1/cgibin/PA1DETAIL

http://www1.ipdl.inpit.go.jp/RS1_E/cgibin/RS1P400.cgi/1106/

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Critical Point`

Since FTO search is jurisdiction specific, legal status of the patent/applications has to be checked on the respective jurisdiction. For example, if the search is US specific then searcher have to mention the legal status of the patent/applications in the US region which can be retrieved from USPTO. In case the search is global then it is better to mention the PCT legal status of the patent/applications which is available on the Espacenet. Separate the relevant based on the legal status x Granted patent x Pending patent/Patent application x Abandoned or withdrawal x Lapsed

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Mapping the claims of the relevant patent with the features of the given invention provides clarity on overlapping of claims and the risk of infringement

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Claim mapping involves mapping one or more claims or part of claims of the relevant patent with the each features of the given invention

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For FTO analysis, usually independent claims were considered, but in some case wherein specification of independent claims(which is essential to show the risk of infringement) are described in dependent claims. In such cases, dependent claims also considered for claim mapping

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Methodology and structure of claim mapping is different from one searcher to another. But final claim mapping should clearly communicate the risky claims and relevancy order of listed patent applications.

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Claim Mapping Method 1

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Relevant Patent 1 Claim 1 Claim 2

Relevant Patent 2 Claim 5 Claim 7

Relevant Patent 3 Claim 18 and dependent Claim 21

Product Features Element 1 Element 2 Element 3 Element 4 Element 5

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FTO search report should containy

A search scope which includes geographical coverage, year coverage and limitations of the technology or product

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A description of the given product/technology written by the searcher to confirm that he/she understands the novel features and nuances of the invention

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Search strategies which includes search query, databases used, number of hits and search fields

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An independent table for identified relevant patents and patent applications that includes: x patent or patent application number, x invention title, x abstract, x publication date, x assignee or inventor, x legal status , x family members and x relevant claims which express the similarity of product features.

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FTO study for Product-by Process/process is complex in two steps when compared to FTO study of product.

x Search query formulation x Patent analysis.

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the search query should cover all steps and material/reactant/catalyst used in the process.

For example: Reactant + catalyst + intermediate + product (0-demethyl-doxorubicin or demethyldoxorubicin or demethyldoxorubicin) and (palladium or pd) and (formic acid or formate) and (carminomycin or Karminomycin or carubicin))

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Time consumption of patent analysis for process claim is high when compared to product claim.

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Several factors needs to be analyzed number of steps involved to attain the end product nature of reactant or raw material used to start the process intermediates (their background has to be examined) catalyst involved product (their background has to be examined) Environmental factors (pH, temperature etc.,)

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Study product features on the client website. Identify if client has any collaboration for given technology; if so, then check whether collaborates have filed any patent application.

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Combination of search field helps to narrow down the hits. For example, claim based search query in combination with IPC or full text search query in combination with IPC

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Verify and re-verify the scope with the customer Don't miss obvious references Carry out the search in two independent parts Be sure you know why you are rejecting each reference and think twice about it

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Difference in Law It restricts the FTO opinion but not FTO search

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Restoration of Lapsed Patent Need to track the relevant lapsed patent at least one year (sec 60) to ensure the legal status Patent lapses due to failure to pay annual renewal fee Patentee has one chance to restore it by paying renewal fee within 18 months from the date patent ceases to be in force Illustration The due date for payment of renewal fee is 24th June 2009 and the applicant fails to pay the renewal fee, as a result the patent lapses and ceases to be in force. If the applicant wants to restore the application, he shall make request to restore the application before 24th December 2010 i.e., within 18 months from the date patent ceases to be in force.

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Patent term 20 years from the date of filing, after that patent fails to be in force and expires. The term of patent in case of International applications filed under the Patent Cooperation Treaty (PCT) designating India, shall be twenty years from the international filing date accorded under the Patent Cooperation Treaty. Illustration Applicant files a patent application in US is 2nd June 2009, files PCT application on 31st May 2010, files national phase in India on 12th December 2010. Assuming that his patent is granted in India as well as US. His patent in US shall expire on 2nd June 2029 in India. The same patent expires in India on 31st May 2030 (20 years from international filing date as accorded by PCT). Patent term shall be calculated very carefully depending upon national phase filing details.

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Patent term extension (supplementary protection certificate (SPC)) ` A patent term extension of 5 years (maximum) can provide for pharmaceutical patents if patentee made an application. Length of the patent term extension granted based on the time between the date of filing of patent application and date of marketing approval Patent Term extension applicable Australia, Japan Korea, Israel, United States & Member states of the European Union Patent Term extension not applicable Argentina, Brazil, Canada, China, Colombia, Ecuador, Hungary, India, Malaysia, New Zealand, Peru, South Africa and Venezuela

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Lack of searchable patent databases Search field limitation (including India, most of the Asian countries) Number of key terms limitation Lack of Non- English translation (Language) Paid database like lexis nexis, questel orbit can overcome some of the problem.

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Patent search Certificate course on patentability/novelty search Certificate course on Freedom to operate (FTO) search Certificate course on validation/invalidation search Certificate course on patent landscape analysis Indian Patent Agent Examination Website: www.origiinipa.com

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Contact information Sathya R [Patent analyst] Origiin IP Solutions LLP HSR Layout, Bangalore Email: info@origiin.com Phone: 9994633938

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