Tag Archives: patent search
Best Practices for Conducting a Patent Invalidation Search
Follow
Introduction:
Patent invalidation/validation searches are performed to assess the validity of a granted patent. In general, an invalidation search is sought by companies sued for infringing a granted patent claim(s), and a validation search is sought by an entity/individual before suing an infringer to assess the patent’s validity. The procedure followed for preforming both these searches is identical to a large extent. However, the terminology and preferences may vary depending whether the search is sought by a patent holder or an alleged infringer. Additionally, invalidation/validation searches may also be considered before seeking license for a patent, and in evaluating the strength and value of patent portfolio during mergers and acquisitions.
Establishing priority date:
Before performing an invalidation search, one has to first establish the priority date of the claims in the patent which needs to be invalidated. In general, any disclosure that is available to the public before the date of filing of the patent to be invalidated is considered prior art. Also, even if a patent application is published after the filing date of the patent to be invalidated, but the published patent applications filing date is before the filing date of the patent in question, then the published patent application is considered to be a prior art.
That being said, there will be scenarios where the patent to be invalidated is a continuation patent or a continuation-in-part patent (referred to as patent of addition in some countries), which can claim priority from one or more patent applications. In such scenarios, it may be difficult to identify the exact priority date since the patent is claiming priority from multiple applications. A searcher has to analyze the claims of the patent to be invalidated to determine the first patent application in the entire family, which discloses all the limitations in the claims (at least the independent claim) of the patent to be invalidated. In most of the cases, majority of the features may be disclosed in the previously filed patent applications, however there may be features which are be disclosed only in the patent to be invalidated. In case such features/limitations are part of the claims of the patent in question, then it can be argued that the priority date for such claims should be the filing date of the patent to be invalidated.
In case a searcher faces any difficulty in identifying the priority date, it may be better to discuss the same with the attorney and the client. However, as a rule of thumb, it’s always advisable to consider the filing date of the patent in performing an invalidation search, as an attorney can take the final decision and filter the references at a later stage, if required.
Additionally, in case a reference found to invalidate the patent is a PCT (Patent Co-operation Treaty) application or a national phase application claiming priority from different applications, a searcher should keep in mind that the effective date calculation for the reference may vary based on the jurisdiction of the patent to be invalidated. For example, in certain scenarios, as per US laws, a U.S. patent application publication of a National Stage application and a WIPO (World Intellectual Property Organization) publication of an international application are considered to be prior art as of the international filing date only if the international application was filed on or after November 29, 2000 designating the United States and was published in English.
Sources and strategies:
Once the priority date is established for the patent to be invalidated, the searchers next goal is to find references (non-patent literature or patent literature) which are available before the established priority date and disclose the claimed limitations of the patent in question. Essentially, the main objective will be to find a single reference disclosing all the claimed limitations; however it may not always be possible.
A searcher in analyzing the claimed features must adopt broadest reasonable interpretation, and may also refer to the file history of the patent in order to identify the novel aspects of the claims. Such analysis may also provide an insight into keywords, key strings, and classification used by the examiner, references cited by examiner and applicant, arguments of both parties, and reasons for allowing claims, among others. Further, the searcher may have a clear idea about the aspects of the claims which are critical, and can lay out strategies for finding references teaching such aspects. In some cases, analyzing the references cited by the examiner and there family members can be helpful, as it’s always possible that the examiner may have missed out on few key excerpts which may help in invalidating the patent.
Paid patent databases usually enable identification of superior results as compared to free databases for various reasons such as, wide data coverage, abundant options to query the database, flexible search interface, and various additional features like similar patent search and citation analysis, among others. However, one may also consider free databases as they may also provide good results at times. Searchers should also focus on Non-Patent Literature (NPL) as not all examiners rely on them during prosecution. NPL includes any public document or disclosure other than patent literature. One common problem faced with NPL’s is in determining the date they are made available to public, for example, disclosure on websites may sometime not include date on which it is made available. In such scenarios, searchers can utilize web archive resources like “waybackmachine.org” to check whether the disclosure is available before the established priority date.
Searcher should also keep in mind that every search is different and a single protocol for all searches does not exist. The keywords, key strings, classifications and search strategies used for a search should evolve with time based on the search results found.
To know more about general prior art search strategies click here
I hope you found this article helpful. You may also download a copy for your reference.
You may subscribe to our articles to receive notification of such interesting articles in your inbox.
Feel free to check our patent services page to find out, if we can cater to your requirements.
Best regards – Team InvnTree
This work is licensed under a Creative Commons Attribution-NonCommercial 3.0 Unported License
Using Patent Citations as an Effective Tool While Conducting Prior Art Search
Introduction
A prior art search is conducted for several reasons. Some of the reasons may include assessment of novelty, invalidation of patents, competitor and technology monitoring, and patent landscape study among others. A prior art search may be carried by using a combination of various techniques. Typically, techniques for carrying out prior art search include key-words strings, patent classifications, inventor based searching, assignee based searching and citation based searching.
Among the techniques of searching, citation based searching is frequently ignored, although citation based searching can deliver extraordinary results.
Patent citations
A patent citation is an instance where a patent or an application mentions or includes a reference to an earlier patent or patent application. Its function is similar to an academic paper citation which cites an earlier published work. Patent citations may be added by the patent examiner as well as the applicants of the patent.
Generally, patent citations included by the examiner are for the purpose of restricting patent claims, while those included by the inventor/applicant are for demonstrating prior art related to the invention. In either case, prior art patent citations are used to assess patentability of an alleged invention.
A patent/application, which may be referred to as a root document, may primarily have two types of patent citations, viz., backward citations and forward citations. Backward citations of a root document are patents/applications that are referred by the root document. Forward citations of a root document are patent/application referring to the root document. Any of the backward and forward citations may be a self-citation. Self-citation is when the root document cites or be cited by a patent/application that mentions the same author or assignee as the root document.
Finding patent citations
Backward citations of a root document may be found in the root document itself under a heading of “References cited” or similar headings. Forward citations may be found in online patent databases. One should note that the list of forward citations, unlike backward citations, may grow over time. The European Patent Office database is a freely available resource where both forward and backward citations can be found. Most other free databases only make backward citations available. Most of the paid private patent databases make both the citations available, since these databases use INPADOC, which is a database created and maintained by the European Patent Office.
Reasons for using patent citation based search
There are several reasons why patent citation based searching technique has to be part of the overall prior art search strategy, and some of the reasons are discussed below.
Tapping into ready-to-use human curated relevant search results
Patent citations are a result of one or more (in case of forward citations) examiners' efforts to identify relevant prior art references while conducting examination. The examiner cites a prior art reference after having reviewed the reference in detail, and not just because the prior art reference has a few key words that appear to be relevant. Hence, human intelligence would have been applied in citing a reference as relevant. It would be wise to use the set of documents grouped together by way of citations in prior art searching. Once a patent/application has been identified as relevant, its citations may disclose aspects related to the root document, which may also be relevant to the prior art search.
Improving the ability to structure claims and description better
One of the key challenges in claims drafting is defining the spread of prior art. A set of citations, when considered together, can help in defining the spread of prior art teaching in the context of a proposed invention. Such a contextual understanding of prior art can help in defining the scope of the claims in a way that the claims are neither too broad, thereby resulting in the prior art rendering the claims un-patentable, nor too narrow, thereby failing to exploit the full potential of the invention.
Identify a technological trend
Patent citations are one of the best sources to track the flow of innovation in a particular field of technology. With the help of backward and forward citations, it is possible to map knowledge spill-overs from earlier inventors to later inventors. Additionally, citations help in recognizing trends in technology and innovation which may be useful in determining potential research fields. It is also possible to identify seminal patents by analysing patent citations, among other factors. A seminal patent covers an invention which is considered to be so important that it creates a technological shift in a particular field of technology. A patent having a relatively large number of forward citations when compared to other patents in its field may be a seminal patent.
Assessing patent’s commercial value
A variety of situations may require a market value to be estimated for patents. As an example, patent valuation may be required when a patent owner is looking for investors or manufacturers, in case of company takeovers, or during the buying/licensing of patents. In such situations, analysis of patent citations may help towards assessing commercial value of patents. It is generally accepted that a patent having numerous forward citations may turn out to be more valuable when compared to patents with fewer forward citations. This is because, having many forward citations means that the technology disclosed by the patent was used by many other inventors in subsequent developmental efforts, resulting in various new innovations that have their roots in this patent, thereby increasing the value of the patent.
Mitigating infringement risks
Freedom to operate studies are conducted to identify patents that might have the potential of being infringed by a product/process. In case patents that may adversely impact the freedom to operate are identified, then it would be wise to also consider citations of such patents in the freedom to operate study. Since citations mostly disclose information that may be closely related to the root patent, there is a likelihood that claims of such citations may also be relevant in assessing freedom to operate.
Conclusion
Effectiveness of prior art search has far reaching implications. Hence, attempts are made to make prior art search as robust as possible by using various search strategies. Among the search strategies, classification based searching and key-words strings based searching will in most scenarios be the primary search strategies. Once a bunch of relevant references are identified by using these primary strategies, citation based searching using the identified relevant references will exponentially improve the quality of the prior art search exercise. Hence, although citation based searching can most often be a secondary search strategy, its impact should not be neglected and citation based searching should always be part of prior art search exercise.
I hope you found this article helpful. You may also download a copy for your reference.
You may subscribe to our articles to receive notification of such interesting articles in your inbox.
Feel free to check our patent services page to find out, if we can cater to your requirements.
Best regards – Team InvnTree
This work is licensed under a Creative Commons Attribution-NonCommercial 3.0 Unported License
How can I find out whether my invention is patentable?
- Patentable subject matter
- Novelty
- Non-obviousness/inventive-step
- Industrial application
- Enablement
- How can I find out if my invention has already been invented?
- What can be patented and what cannot be patented
- How to Conduct a Patent Search?
- Are software inventions patentable in India?
Determination of Obviousness/Inventive Step by the European Patent Office
Introduction
Basic Patentability requirements are
- NOVELTY/NEW – Not previously known by others or previously available in the public domain
- USEFUL- Must have practical utility to accomplish an useful purpose
- NONOBVIOUSNESS / INVENTIVE STEP-The invention must not be obvious to one of ordinary skill in the art.
- State of the art: "everything made available to the public by means of a written or oral description, by use, or in any other way, before the date of the filing of the European patent application"
- Person skilled in the art: “should be presumed to be a skilled practitioner in the relevant field of technology, who possesses average knowledge and ability, and is aware of what was common general knowledge in the art at the relevant date ".
- Selecting the closest prior art
- Formulating the technical problem
- Assessing the obviousness of the claimed solution
- additional features
- modified features
- functional features
- whether the content of the disclosures (e.g. documents) is such as to make it likely or unlikely that the person skilled in the art, when faced with the problem solved by the invention, would combine them – for example, if two disclosures considered as a whole could not in practice be readily combined because of inherent incompatibility in disclosed features essential to the invention, the combining of these disclosures should not normally be regarded as obvious;
- whether the disclosures, e.g. documents, come from similar, neighbouring or remote technical fields;
- the combining of two or more parts of the same disclosure would be obvious if there is a reasonable basis for the skilled person to associate these parts with one another. It would normally be obvious to combine with a prior-art document a well-known textbook or standard dictionary; this is only a special case of the general proposition that it is obvious to combine the teaching of one or more documents with the common general knowledge in the art. It would, generally speaking, also be obvious to combine two documents one of which contains a clear and unmistakable reference to the other. In determining whether it is permissible to combine a document with an item of prior art made public in some other way, e.g. by use, similar considerations apply.
- Determination of Obviousness/Inventive Step in United states of America
- Determination of Obviousness/Inventive Step- Indian Approach
This work is licensed under a Creative Commons Attribution-NonCommercial 3.0 Unported License
Determination of Obviousness/Inventive Step in United states of America
Introduction – Non obviousness
Non obviousness is one of the essential patentability requirements to obtain a patent in United States, as stated under section 35 U.S.C. § 103. The purpose of including a non-obviousness requirement is to encourage innovations that are not mere combination of prior art, without any technical advancement.
Title 35, United States Code 103(a):
- Determining the scope and content of prior art
- Analysing the differences between the prior art and the claims at issue
- The level of ordinary skill in the pertinent art
- Evaluating evidence of secondary considerations. Secondary considerations include commercial success, a long felt but unmet need for a device, and the failure of others to solve the particular problem addressed by the invention in question.
Further, the Supreme Court in KSR v. Teleflex case identified a number of rationales to support a conclusion of obviousness, which are consistent with the proper “functional approach” to the determination of obviousness as laid down in Graham.
Case Law:
Teleflex, Inc. sued KSR International, claiming that one of KSR's products infringed Teleflex's US 6237565 entitled “Adjustable pedal assembly with electronic throttle control”. KSR argued that claim 4 of US 6237565 was obvious under 35 U.S.C. § 103 and therefore invalid. The district court ruled in favor of KSR, but the Court of Appeals for the Federal Circuit reversed the order in January 2005. However, on April 30, 2007, the Supreme Court unanimously reversed the judgment of the Federal Circuit, stating that claim 4 of US 6237565 was obvious under the requirements of 35 U.S.C. §103.
Guidelines to evaluate obviousness
Combination of prior art elements:
One of the steps to determine obviousness is to articulate whether the claimed invention is a result of mere combination of prior art elements. It is always desirable to find, if a person skilled in the art can come up with the claimed invention by combining the elements of known methods, wherein each element would have performed the same function as it would have separately. Sundance, Inc. v. DeMonte Fabricating Ltd is a hallmark case for revocation of patent based on aforementioned statement. Sundance, Inc invention was related to a segmented and mechanized cover for trucks, swimming pools, or other structures. Sundance, had sued DeMonte Fabricating Ltd for infringement of their US patent 5026109. However, DeMonte Fabricating Ltd argued that claim 1 of US patent 5026109 was invalid and obvious citing two prior art references. The first prior art reference taught a reason for making a segmented cover with ease of repair, in which a single damaged segment could be readily removed and replaced when necessary. A second prior art reference taught the advantages of a mechanized cover for ease of opening. The Federal Circuit noted that the first reference and the second reference would perform in the same manner it would have individually, even after combination. Therefore, it was obvious for a person of ordinary skill in the art to expect that addition of replaceable segments as taught by the first reference to the mechanized cover of the other would result in a cover that maintained the advantageous properties of both of the prior art covers.
Substitution of elements to obtain predictable results
Substitution of an element by another element (analogue) performing similar function is considered as one of the grounds for determination of obviousness. In re Fout, 675 F.2d 297, 213 USPQ 532 (CCPA 1982) had claimed decaffeinating coffee or tea from fatty material. In re Fout, had substituted an evaporative distillation step for separating caffeine from oil. However, prior art disclosed an aqueous extraction step (Pagliaro) and direct distillation process (Waterman) for decaffeinating coffee or tea from fatty material. The court stated that both Pagliaro and Waterman taught a method for separating caffeine from oil and therefore, it is obvious for a person skilled in art to substitute a method for another performing similar function.
Known technique to improve similar devices:
A method is said to be obvious if it enhances a particular class of devices (methods, or products) known in the prior art by using a known technique. In re Nilssen case, the invention was directed to a means by which the inverter can be disabled if current exceeded pre-established threshold level for a specified period. The United States Patent and Trademark Office Board of Patent Appeals and Interference rejected claims 1-4, 9-11, and 16 of Nilssen's patent application Serial No. 476,150 on the ground of obviousness citing two prior art references as provided below: The first prior art USSR Certificate No. 729,738, described a device for indicating the high-load condition via a control means in an inverter, but did not indicate the specific manner of overload protection.The second prior art U.S. Patent No. 3,305,793(Kammiller) disclosed disabling the inverter circuit by means of a cut off switch if there exist a high load current condition. The federal circuit stated that it would have been obvious to one of ordinary skill in the art to use the threshold signal produced in the USSR device to activate a cut off switch to render the inverter inoperative as taught by Kammiller.
Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results
Applying a known technique to a known device (method or product) for improvement of the device, and finding that the results obtained over such improvement would have been predictable by a person of ordinary skill in the art can be considered as obviousness. Nilssen case can be cited in this context as well.
Obvious to try
The concept of “obvious to try” is a quite sensible requirement for determination of obviousness. “Obvious to try” can be examined as follows:
-
The need for designing the claimed invention to solve a problem being recognised at the time of invention.
-
Existence of a finite number of known solutions for the problem recognised
-
Implementing one of the known solutions, which is obvious to a person skilled in the art for solving the problem recognised.
Pfizer, Inc. v. Apotex, Inc
Pfizer had been selling amlodipine besylate drug in tablet form under the trademark Norvasc® in U.S. At the time of invention of amlodipine besylate, amlodipine (Apotex) was known to posses similar therapeutic properties as were claimed by Pfizer for amlodipine besylate. Pfizer however, argued stating that amlodipine besylate had better manufacturing property as compared to amlodipine.
Court’s decision:
The court found that a person skilled in the art would have obviously tried to formulate the salt form of the compound, if he had problems with the machinability of amlodipine and would have been able to narrow the group of potential salt-formers to a group of 53 anions known to form pharmaceutically acceptable salts, which would be an acceptable number to achieve “a reasonable expectation of success.”
Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art
The scope and content of the prior art, whether in the same field of endeavor as that of the applicant’s invention or a different field of endeavor, including a similar or analogous device should be identified to examine obviousness. Further, design incentives or market forces prompting to adaptation of the known device (method, or product); the differences between the claimed invention and the prior art encompassed in known variations or in a principle known in the prior art are important aspects for determining obviousness relating to the claimed invention. In addition to the above mentioned criteria for determining obviousness, it is also essential to know how a person with ordinary skill in the art, in view of the identified design incentives or other market forces, would have implemented the claimed variation of the prior art, and how would have been the claimed variation predictable to a person of ordinary skill in the art.
The claimed invention in Ex parte Catan, 83 USPQ2d 1568 (bd. Pat. App. & Int. 2007) was a consumer electronics device using bio authentication for enabling sub users to place orders up to a preset maximum credit over.
The first prior art (Nakano) disclosed a consumer electronics device like the claimed invention, which provided security through a password authentication rather than a bio authentication device. The second prior art (Harada) disclosed the use of a bio authentication device (fingerprint sensor) on a consumer electronics device (remote control) to provide bio authentication information (fingerprint). The third prior art (Dethloff) disclosed that it was known in the art at the time of the invention, to substitute bio authentication for PIN authentication to enable a user to access credit via a consumer electronics device.
The Board stated that a person with ordinary skill in the consumer electronic device domain at the time of the invention would have been familiar with using bio authentication information interchangeably with or in lieu of PINs to authenticate users. The Board concluded that it would be obvious to a person with ordinary skill in the art of consumer electronic devices to update the prior art password device with the modern bio authentication component and thereby gain, a secure and reliable authentication procedure.
TSM test
TSM stands for teaching, suggestion and motivation. A claimed invention fulfils the requirement of being non obviousness, if combination of know elements, which forms the invention, not motivated, suggested or taught in prior art.
Conclusion:
The very fact that a number of approaches have been suggested to determine whether a proposed invention is obvious or not, is an evidence that determining obviousness is a complex subject. Hence, it is important for patent professionals to be abreast with the subject, so that informed advice can be provided to clients at least based on existing guidelines.
You may be interested in reading our articles:
- Determination of Obviousness/Inventive Step by the European Patent Office
- Determination of Obviousness/Inventive Step- Indian Approach
This work is licensed under a Creative Commons Attribution-NonCommercial 3.0 Unported License
Determination of Obviousness/Inventive Step- Indian Approach
Patentability requirements
For an invention to be patentable:
- it has to be novel (new)
- it has to involve an inventive step (non-obvious)
- it has to be industrially applicable (can be made or used in an industry)
Indian defining of “Invention” – History and Evolution
First definition, 1972
“Invention” means any new and useful-
(i) art, process, method or manner of manufacture;
(ii) machine, apparatus or other article;
(iii) substance produced by manufacture.
and includes any new and useful improvement of any of them, and an alleged invention.
As can be seen above, the phrase “inventive step” was not even included in the definition.
Second definition, 2002
(i). “invention” means a new product or process involving an inventive step and capable of industrial application;
(ii) “inventive step” means a feature that makes the invention not obvious to a person skilled in the art.
The phase “inventive step” was included in the definition of “invention”. Further, the phrase “inventive step” was also defined.
Current definition, 2005:
(i). “invention” means a new product or process involving an inventive step and capable of industrial application;
(ii) “inventive step” means a feature of an invention that involves technical advance as compared to the existing knowledge or having economic significance or both and that makes the invention not obvious to a person skilled in the art.
The definition of the phrase “inventive step” was amended to broaden the scope of “inventive step”.
“Inventive Step” as laid by the Indian Patent Act
The term “inventive step” plays a vital role in deciding whether a patent should be granted to a proposed invention.
As per sec 2 (l) of the Patents Act, a new invention means any invention or technology which has not been anticipated by publication in any document or used in the country or elsewhere in the world before the date of filing of patent application with complete specification, i.e., the subject matter has not fallen in public domain or that it does not form part of the state of the art.
In 2005, India, for the first time, defined as to what constitutes an "inventive step" by incorporating a new provision in the definition section of the Patents Act. Section 2(1)(ja) of the Act defines "inventive step" to mean "a feature of an invention that involves technical advance as compared to the existing knowledge or having economic significance or both and that makes the invention not obvious to a person skilled in the art".
Bishwanath Prasad Radhey Shyam v. Hindustan Metal Industries: Case Law Interpretation on Inventive step
This case can be considered to be the most important case in interpretation of inventive step in the Indian jurisdiction. Though the case was decided in 1978, the principles laid down in the case are followed even today and have been codified in the Indian Patent Act.
The plaintiff (Hindustan Metal Industries, a registered partnership firm carrying on the business of manufacturing brass and German silver utensils at Mirzapur) in this case claimed to have invented a device and method for manufacturing utensils, introducing improvement, convenience, speed, safety and better finish, in the old prevalent method which was fraught with risk to the workers, in as much as the utensils used to fly off from the headstock, during the manufacturing process. The plaintiff got the invention patented, as an assignee, under the Indian Patent and Designs Act, 1911 on May 6, 1951 with effect from December 13, 1951. In September1952, the plaintiff learnt that the defendant (Bishwanath Prasad Radhey Shyam, a concern carrying on the business of manufacturing dishes and utensils in Mirzapur) was using and employing the method under the former’s patent. The plaintiff served a notice upon the defendant asking him to desist from infringing the plaintiff’s patent and further claim damages for Rs. 3000. The validity of the patent was challenged by defendants on the ground of lack of novelty and inventive step and also filed a counter claim praying for the revocation of the plaintiff’s patent on the same ground. A division bench of a district court of Allahabad started its analysis of inventive step and after considering the prior art in the case, stated that the patented invention was merely an application of an old invention, known for several decades before the plaintiff’s patent, which was no more than a workshop improvement. The court as a result had issued the petition for revocation on the patent. The plaintitiff made appeals to a division bench of the High Court, where the appellate bench concluded that the method of manufacture did not involve any inventive step or novelty. Furthermore, as the invention was publicly used by the patent holder before the date of filing of the patent application, the Court observed that the novelty of the invention was negated. In the light of its analysis, the court concluded that the invention lacked novelty and inventive step.
Assessment of Inventive Step
If, a product or a process is novel, the next question that arises is "Is the approach obvious and if it not then what is the depth of the inventive measures taken by the inventor”. To determine obviousness is to find out whether the person, with ordinary skill in the art, would have come up with similar innovation for the technical problem under similar circumstances without being provided with the solution.
Since the Patents Act (1970) was brought into force, there have been a few cases in India that have dealt with the obviousness issue extensively. The Supreme Court held that obviousness has to be strictly and objectively judged. The Supreme Court further recognized that obviousness is something that is a natural suggestion of what was previously known.
A test to determine whether a document can negate the existence of inventive step is as follows:
Had the document been placed in the hands of a competent craftsman (or engineer as distinguished from a mere artisan), endowed with the common general knowledge at the 'priority date', who was faced with the problem solved by a patentee but without knowledge of the patented invention, would he have said, "this gives me what I want". To put it in another form: "was it for practical purposes obvious to a skilled worker, in the field concerned, in the state of knowledge existing at the date of the patent to be found in the literature then available to him, that he would or should make the invention the subject of the claim concerned?”
Novartis v. Union of India case law interpretation on Obviousness
Novartis filed an application for grant of patent for chemical compound called Imatinib Mesylate which is a therapeutic drug for chronic myeloid leukemia and certain kinds of tumours and is marketed under the names “Glivec” or “Gleevec” at the Chennai Patent Office on July 17, 1998. In the application it claimed that the invented product, the beta crystal form of Imatinib Mesylate, has more beneficial flow properties better thermodynamic stability and lower hygroscopicity than the alpha crystal form of Imatinib Mesylate and further claimed that the aforesaid properties makes the invented product novel. The patent application had attracted five (5) pre-grant oppositions in terms of section 25(1) of the Act. The Assistant Controller of Patents and Designs heard all the parties, on December 15, 2005, as provided under rule 55 of the Patent Rules, 2003, and rejected the appellant’s (Novartis) application for grant of patent to the subject by 5 (five) separate, though similar, orders passed on January 25, 2006 on the opposition petitions. The Assistant Controller held that the invention claimed by the appellant was anticipated by prior publication, i.e., the Zimmermann patent; that the invention claimed by the appellant was obvious to a person skilled in the art in view of the disclosure provided in the Zimmermann patent specifications. The Supreme Court of India rejected Novartis patent plea on April 1, 2013
Obviousness is judged based on the hypothetical construct of a "person of ordinary skill in the art". The person of ordinary skill in the art must:
- belong to the relevant field.
- look at the prior art from a position of his personality, considering his/her interest in risk taking.
- be well aware of the fact that even a small structural change in a product or in a procedure can produce dramatic functional changes.
India has been witnessing an increase in patent enforcement activities. Going forward, one can anticipate much more refined tests for determining the presence of inventive step in inventions. It is recommended that patent practitioner keep themselves educated about this fascinating topic of “inventive step/obviousness” and provide informed opinions.
You may be interested in reading our articles:
- Determination of Obviousness/Inventive Step by the European Patent Office
- Determination of Obviousness/Inventive Step in United states of America
This work is licensed under a Creative Commons Attribution-NonCommercial 3.0 Unported License
How can I find out if my invention has already been invented?
This question may get asked when,
Researchers, before investing their time and money, would want to know, if it’s worthwhile to research on a product. They would want to find out, what kind of similar products exists in the market and what technological improvements can be made to those products.
For any new technological improvements/inventions, inventors may want to patent their invention. Before starting the process of patenting, inventors would want to access their chances of patentability of the invention. In order to access the patentability of an invention, a search to identify prior art is required.
When a product is to be launched into the market, to avoid infringement, it is advisable to determine freedom to operate for the product in question. In order to determine Freedom to operate, a search of patent documents of the jurisdiction in question is to be conducted. To know more about freedom to operate, you can go through our article about “Freedom to Operate”
A search for prior art can be conducted on the internet using search engines. This strategy may uncover some data, but will not always uncover very relevant data. This is owing to the fact that patent documents and publications may not have been indexed in search engines. Search strategies involved in searching of relevant patent and non patent data requires considerable skill and technique. To know more about search strategies and techniques to be adopted, you can read our article “How to conduct a patent search”
Another strategy to be adopted is to Search for non patent literature. Searching of non patent literature can aid in finding out if a similar invention exists. Searching of non patent literature be conducted using databases such as IEEE, Science Direct, IPmenu which hold enormous amount of data relating to non patent literature. Searching of such non patent literature data can uncover similar technology and would help in taking an informed decision regarding the invention. If a similar technology exists in non patent literature, it will affect the patentability of the invention, but it will have no bearing on the freedom to operate for a product, as non patent literature does not provide rights to the owner of that publication from stopping others from making and selling of those products.Note that if a publication about an invention exists in non patent literature, it does not mean that the owners would not have sought patent protection as well. It is advisable to cross check patent data as well before taking a decision about Freedom to operate.
Another strategy to be adopted is to search patent literature. Searching of patent literature can be conducted using various free and paid patent databases. It is important to know a few facts about patents.
Patents are jurisdiction specific. It means that to obtain patent protection, one has to file for patents in all the jurisdictions one wishes to obtain protection.
While determining freedom to operate for a specific country, only patent documents from that jurisdiction are to be considered.
To determine the patentability of an invention, one needs to consider relevant patent documents from all jurisdictions.
I hope you find this article helpful. Check our patent services page to find out if we can cater to your patent requirements. Also feel free to contact us or ask us a question and have it answered within 24 hours.
This work is licensed under a
Is my product infringing on others patents?
This is the question all technology companies need to ask themselves at a very early stage of product development.To understand whether you product/process infringes on others patent rights; we first need to understand what patent infringement means.
