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PATENT COMPENDIUM
Research
An important issue in industrial property rights is the information procurement. Risks and unnecessary investments can be avoided by doing researches early on. However each research will have certain gaps that sometimes cannot be closed even by further investigations (misclassifications, disclosures have not taken place yet, etc.). Researches can be done online or offline, by oneself or by professional service provider. The following hints can offer only a general introduction, for further information and research strategies please contact appropriate specialists.
Novelty research/ prior art research
Infringements research/ freedom to operate research
State of the art research
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aim: research to gain an overview over the state of the art with an assessment of relevance for the obtained results.
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characteristics: not extensively necessary; time periods, markets and therefore document scope can be narrowed down, where appropriate additional specialized literature research
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type of results: relevant patents / utility models as bibliographical information or as full text
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example: in 1964, the cargo ship AL Kuweit, which sunk in the harbor of Kuwait, has been successfully lifted, by filling up its cargo bay with 2.500 cubic meters of Styrofoam pellets. The patenting of this idea although failed because of Walt Disney, who has already let his comic book character Donald duck lift a ship with ping pong balls in the year 1949.
Novelty research/ prior art research
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aim: research in order to find out, if an invention is a novelty, therefore is beyond the state of the art, to ensure that an patent application will be granted or in order to safe development costs
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type of results: significant material that could infringe the novelty status, usually small number of documents, ca. 10, preferably in full text
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example: the mechanism of Antikythera is an antique artifact made out of gears which resemble a clockwork, the artifact is the oldest known differential gear mechanism. The instrument has been designed and constructed by Greek scientists and dated between 150 and 100 BC.
Infringements research/ freedom to operate research
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aim: analysis if the placement of a product in a certain market infringes applicable law, and if so, research when it will become possible to enter the market
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characteristics: research is narrowed down to markets, circumstances or time frames
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type of results: market relevant documents, preferably in full text with their legal status and family members
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example: granted protective rights in China
The case:
In 2008, the company Schneider has been sued for patent infringements against their own products by a Chinese court and was ordered to pay a fine of 31 million euros. A Chinese patent pirate had reserved the rights for Schneider products for the Chinese market.
Objection research/ invalidation research
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aim: research for material against a protective right, to render it as invalid, occasions are infringement actions of third parties, or protective rights which can block the own technological development
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characteristics: worldwide markets and number of documents are unrestricted
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type of results: relevant pre-published documents, preferably in full text, in certain cases a zero result research, this means big effort but none matching results
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example:
Yasmin®: in 2005, Bayer has filed a patent infringement at an us court against Barr pharmaceuticals Inc. Bayer claimed that Barr would infringe the patents of the Bayer contraceptive Yasmin with their generic product. In 2008 the US federal court declared the Bayer patent ‘531 for Yasmin as invalid. This verdict was confirmed in 2009 by the US appeal court, and again by the US Supreme Court in 2010. Bayer generated 1.28 billion euros in revenue with the Yasmin product family in 2009.
Name research/ brand research
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aim: research for protective rights of a certain applicant or inventor with the intention: competitor analysis, company portfolio analysis, search for experts, specialists or venture partners
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characteristics: this well-founded research requires preliminary work and analysis of company databases
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type of results: patents/ utility models as bibliographical data or in full text, sorted by certain inventors or preliminary carried out perimeters
Patent monitoring
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aim: periodical monitoring of branches, markets, competitors, legal states, citations
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type of results: patents/ utility models as bibliographical data or in full text, sorted weekly, monthly, annually