Patent Databases And Patent Information System – Intellectual Property Rights Laws and Practices Important Questions
Question 1.
A patent search is a search conducted in the patent database to check whether any invention similar to the invention in respect of which patent is obtained, already exists. Discuss the patent search, patent database and various types of searches used in patent documentation.
Answer:
The object of the Patent search is to evaluate the subject matter invention in comparison to the prior art.
Prior art refers to scientific and technical information that exists before the effective date of a given patent application. Prior art may be found in any public documents such as patents, technical publications, conference papers, marketing brochures, products, devices, equipment, processes, and materials.
A prior art search refers to an organized review of prior art contained in public documents, prior art searches can be of various kinds: patentability searches conducted by an inventor before filing a patent application. Searches are conducted using different kinds of databases, from public databases of issued patents on the internet to exhaustive databases including technical literature. Searches can be done by legal professionals, by scientists, or by researchers, sometimes, defendants in patent litigation even offer bounties for invalidating prior art.
A patentability search may be conducted before the filing of a patent application to gauge the prospects of obtaining broad claim coverage. The purpose of conducting such a search is to find references related to the claimed invention in order to make an assessment of its patentability. Searches are typically fast and inexpensive since the patent agent’s clients often do not want to pay for an expensive, thorough search. Also, it is often presumed that the inventor himself will have a good sense of novelty based on his reading of the literature in his field and by communication with his peers.
Searches are a good way to get information on developments in the field of invention. Prior art searches may sometimes reveal what competitors consider worth protecting. Search results may be a critical factor in deciding whether to file a patent application. If a prior art search reveals references that anticipate the claimed invention, the inventor and the patent agent should consider how they can “avoid the prior art” by drafting the claims to overcome. In some cases, a prior art search may reveal patent references that are problematic. Just because you see a reference that seems similar to the invention does not mean the proposed application should be abandoned.
Question 2.
Explain the functions of The Patent Information System (PIS) and the National Institute for Intellectual Property Management (NIIPM).
Answer:
The functions of The Patent Information System (PIS) and National Institute for Intellectual Property Management (NIIPM) are as follows: PIS
(1) To obtain and maintain a comprehensive collection of the patent specification and patent-related literature on a worldwide basis;
(2) To provide technological information in patent or patent-related literature through publication services, search services, and patent copy supply service;
(3) To meet statutory obligation regarding novelty search under the Patent Act, 1970.
(4) Patent related literature on a worldwide basis to meet the need for technological information of various users in:
- R&D establishments
- Government Organizations
- industries
- Business, and
- Inventors.
(5) Other users enabling them to make informed business decisions.
NIIPM
- It is a national center of excellence for training, management, research, education in the field of Intellectual Property Rights related issues
- Caters to the training of Examiners of Patents and Designs
- Examiners of Trademarks & Geographical Indications
- IP professionals
- IP Managers in the Country
- Imparting basic education to the user community
- Government functionaries and stakeholders involved in the creation
- Commercialization and management of intellectual property rights
- It also facilitates research on IP-related issues including preparation of study reports and policy analysis of relevance to the Government.
Question 3.
List out the individual types of searches in patent documentation.
Answer:
The various types of searches are:
1. Pre-Application Searches (PAS)
Years ago, an invention is just an idea. The patent application process is difficult, time-consuming, and expensive. Therefore, the inventor should conduct “Pre- Application Searches” (PAS) before filing a patent application. In this search the inventor should look for:
- Printed publications
- Public knowledge or
- Patent already issued in his country or a foreign country that may relate to the particular invention.
2. State-of-the-Art Searches
It is also known as “Informative Search”. This search is made to determine the general state-of-the-art for the solution of a given technical problem as background information for R&D activities and in order to know what patent publications already exist in the field of the technology or research. This kind of search is especially useful for technology development or technology transfer purpose.
3. Novelty Searches
The objective of this search is to determine the novelty or lack of novelty of the invention claimed in a patent application or a patent already granted, or of an invention for which no application has yet been filed. The aim of this search is to discover relevant prior art. The basic inventive ideas are formulated in such an unspecified way that many publications will apply to this broad description. Dependent on the outcome of the novelty search, the vent decision will be whether to stop or to go ahead in developing the invention. If nothing of relevance was found, it is easy and you should go ahead. The decision becomes difficult if one or more pertinent documents have been found. But important is to restrict the search to the appropriate area. This may be done by identifying a proper place or place for the subject of the searches in the I PC.
4. Patentability or Validity Searches
It is made to locate documents relevant to the determination not only of novelty but also of other criteria of patentability. This type of search should cover all the technical fields, which may contain material pertinent to the invention.
5. Name Searches
These are searches for locating information about published patent documents involving specific companies or individuals, as applicants, assignees, patentees, or inventors.
6. Technological Activity Searches
These searches are for identifying companies and/or inventors who are active in a specific field of technology. These searches are also suitable for identifying countries in which a certain technology is being patented, so as to know where to turn for obtaining particular information in a given field of technology.
7. Infringement Searches
The objective of this search is to locate patent and published patent applications, which might be infringed on by a given industrial activity. The aim of this search is to determine whether an existing patent gives exclusive rights covering that industrial activity or any part of it.
8. Legal Status Searches
A search for this type of investigation is made to obtain information on the validity (status) of a patent or a published patent application, on a given date, under the applicable patent legislation in one or more countries. Such information can assist in making decisions. For example:
- exporting, or
- negotiation of the license agreement.
It can also give guidance on the value attached to a particular patent by the patentee.
Question 4.
Why is a patent search done? What are the various online databases available that provide access to patent documents while conducting patent searches?
Answer:
A patent search is an important step before filing a patent application. A patent search is a search conducted in patent databases as well as in the literature available, to check whether any invention similar to the invention in respect of which patent is to be obtained already exists. Therefore, instead of going forth with the filing, if one conducts the patentability search, one can get a clear idea about the patentability of the invention whether the application should be filed and the strengths and weaknesses of his invention.
Patent information is made available to the public through a variety of databases. Each database covers a particular set of patent documents. Thus, it may be necessary to consult multiple databases in order to find and then access patent documents relevant to your interests. Internet-based databases are online databases. Anyone who has access to the Internet may be able to browse the full text of published patent documents via free-charge databases or commercial databases.
Many national and regional patent offices provide free online access to their own patent collections as well as to select patent documents from other offices.
For example, The Full-Tent and Full Page Image Database Of the United States Patent and Trademark Office (USPTO) is one of the earliest and free online patent information systems.
International Patent Classification (IPC) is a hierarchical classification system used primarily to classify and search patent documents according to the technical fields they pertain to. IBM Intellectual Property Network, Intellectual Property Network (IPN) is a free IBM patent site provided by IBM. The database contains:
- United States Patents (US):1971-present & updated weekly (full text/ full image)
- European Patents – Applications (EP-A): 1979-present, updated weekly (Frontpage & claims/ full image)
- European Patents – Issued (EP-B): 1980- present, updated weekly (front page & claims/ full image)
- Patent Abstracts of Japan (JP): 1976- present, updated weekly (front page & claims/ representative image).