To carry out a patent search and to analyze in depth the scientific, technological and judicial information of high value that these documents contain must be the previous step before starting any line of investigation. The reason is basic and essential. These actions avoid redundant projects and reach innovative, and therefore patentable, results. Given this requirement, endorsed by the new Patent Law (approved in 2015 and in force since April 2017), in this article we will point out the channels where a complete study of the state of the art can be obtained.
Patent information is the first link in a chain that will lead us to a big scoop research, which, by its impact, will obtain more funding aid and generate attractive results for the industry. At the same time, they may lead to strong patents, "which are those with more easily transferable results," explains Carmen Toledo, head of the Technology Information Unit of the Spanish Patent and Trademark Office (SPTO).
In order to assess the importance of reviewing patents, we will use the Horizon 2020 program as an example. The evaluators especially appreciate that prior art research has been carried out on the basis of the projects and definition of the technique. "The absence of a patent search is one reason why many proposals lose many points in the evaluation", says Carmen Toledo.
Patent check, a continuos action
However, the patent search process is not a temporary action in the development of an innovative project; it must be continuous in the different evolutionary phases:
• Project approach. At first, patents are an essential tool to plan based on a solid knowledge of what exists.
• Project beginning. Patents allow us to carry out technological surveillance and ensure that the project has not been developed by others. We must make sure that competition will not be an obstacle.
• Project development. Later we will continue to make new searches to detect patent applications that may force us to reorient the project.
• Results protection. If we finally want to achieve patenting results, we will have to do a new search in order to be sure that they are new and have inventiveness. We should use that patent search to write a good request.
• Results transfer. Patent information puts value on our patent to be transferred
According to data from the survey conducted in 2016 by the European Patent Office to 265 European, American and Japanese innovative companies, 70% use patent information. They do this especially to know the state of the art in the project planning phase (84%), to request the patentability of their results (8 out of 10), to monitor the competition and to control infringements of their own patents.
Which are the peculiarities of patents when they are used to obtain information?
The information contained in these rights is singled out for being:
1) Novel and unique. This information has not been previously published in other media.
2) Exhaustive. A patent can exceed 100 pages compared to the information contained on the same result in a scientific article.
3) Classified according to the technical field to which patent belongs. It is the so-called International Patent Classification (IPC). Each technical field is identified with a code of letters and numbers that is inserted on the first page of patent documents and it is universal. For example, A63B 49/18 identifies "tennis racket covers". There are about 70,000 different IPC codes being updated by the World Intellectual Property Organization (WIPO). The same patent can be identified with several ICP codes if it affects several technical fields.
4) It presents an uniform structure, regardless of the country where it is published. In this sense, it facilitates the search. The organization of patent information is as follows:
a. Identification data; title and abstract; and International Patent Classification (IPC)
b. Technical description (object, history, problem, technical solution, mode/s of realization)
c. Claims (definition of legal monopoly)
d. Figures and illustrations, if it is considered they are necessary for patent.
5) Updated. According to WIPO data, 474 patents are applied each hour worldwide.
6) The same invention can be protected in different countries, therefore it can be found in several languages
How and where could be conducted a patent search?
Patent search can be done in both free databases and value-added platforms.
1. Free databases
Within this group, two databases stand out for their great coverage:
1.1. Espacenet Patent Search
It is the documentary fund of the European Patent Office. It was created in 1998 and has all the patents in the world, which at the moment is numbered in more than 100 million documents. Among its main advantages, it can be noted that:
- It offers technical and legal information, so we can know if the patent is in force; that is, if it is not aware of the payments, you can copy it.
- Allows the search by name or by classification. If we do not know the classification, it allows access to it using keywords that should be in the title or abstract, such as 'stem cells'.
1.2. Patentscope
It is managed by WIPO and includes the patents of 39 national offices and those of the European Patent Office. Among its services, it stands out because:
- It allows to make statistics, results that can be used to base the own projects. For example, it could give statistics on who are the researchers or the countries that are most working in that field of expertise.
- Has an RSS alerts service
- Report on the legal status of patents
1.3. Different state offices also have free search engines in their database. Here are some of them:
• Invenes - Spanish Patents and Trademarks Office (SPTO)
• Oficina Estadounidense de Patentes y Marcas (USPTO)
• Japan Platform for Patent Information
1.4. In addition, there are particular initiatives and free access that also allow searching in one or more of these databases. Some examples are:
• Lens
2. Value-added platforms
In the case of the Spanish Patents and Trademarks Office, it offers three types of services, one of which has cost for the added value that supposes.
On the one hand, in addition to the manual search engine in its database, the SPTO produces two types of periodic information for the user. These are the newsletters and alerts:
- Technological surveillance newsletters. They are published every three months and contain information on technical objects divided into 15 clusters (biotechnology, footwear, etc.)
- Alerts. Users indicate the sectors of which they wants to be informed and may even suggest a field of theirown. If the SPTO detects that there is demand for such information, it will create it.
On the other hand, the SPTO drafts, at the request of the user, the so-called patent technological reports. This service requires payment, cost of which only Spanish universities can be reduced by 30%. It is carried out with the EPOQUE Net tool, which is used by the European Patent Office. The report is prepared by one of their 150 examiners and can be used for a number of uses:
a) It allows to know the state of the art in an initial state
b) Monitor the investigations of third parties during the project and reorient the investigation if it is detected that patents applications and published patents can affect the novelty of the development
c) Identifies innovative, and therefore patentable, elements
d) Warns if a novelty has already been published, sometimes even by the researchers themselves, which immediately hinders the possibility of applying for the patent
e) Verify the patentability of the final selection
f) It facilitates the correct writing of the patent application, since it is possible to add the information provided in the report in the grounds of the project.
Taking into account that the application of this right is no longer free of charge with the new Patent Law, it is relevant to assess the usefulness of these reports in order to curb probably unsuccessful applications and thus reorient the line of research.
To ask for this patent technological report, a brief technical description is necessary to understand what is wanted to be investigated or what is wanted to patent. In fact, it is advisable to request it in the state of project approaching, before having something concrete. After delivering this clear technical information, an examiner will contact the researcher or the company to delineate the search well.
This article summarizes the explanatory day that the head of the Technological Information Unit of the SPTO, Carmen Toledo, gave October18 of 2017 in the University of València Science Park under the title 'How to take advantage of patents information in order to not duplicate efforts in research and developments of the Patent Law'. If you want to be informed of our information days and access our informative content, visit our website www.pcuv.es.