SEARCH & ANALYSIS DATABASE

Why to do: 

• Determine if the invention is new – a requirement of obtaining a patent
• The search locates similar patents or publications which could render the proposed invention not novel
• If the invention is not novel:

1. Drop the idea of filing a patent application – saving time & money
2. Design around
   

When to do: 

• Prior to filing a patent application
• Prior to doing further research – to get a fair idea of what has already been done

Example:

• Invention: Relates to a composition for enhancing corneal healing. The composition comprises vitamin A and a sterile buffer administered to the eye. 
• Prior art: The use of the eye-drops to re-wet contact lenses, wherein said eye-drops comprises Vitamin A, the sterile buffer and other excipients. 

Analysis: The invention lacks novelty, as anticipated by said prior art, which discloses all the features of claimed composition useful for enhancing corneal healing.

Why to do: 

• Assess the chances of obtaining a patent – whether it meets the statutory requirement of novelty & inventive step
• If the invention is not patentable: 

1. Drop the idea of filing a patent application – saving time & money
2. Design around

• Answer the question “Is this idea already taken?” 

No need to reinvent the wheel

• Gives a fair idea of what has already been done in the art
• Provides a good platform for further research in the area

When to do: 

• Prior to filing a patent application
• Prior to doing further research – to get a fair idea of what has already been done

Inventive Step – Example

• Invention:  A process for the preparation of compound ‘C’ by treating compound ‘A’ and compound ‘B’ in the presence of a platinum catalyst.
• Prior art: Discloses a similar process, but the catalyst mentioned was a noble metal catalyst.
• Analysis: Prior art generically disclosed platinum as a noble element which is also an equivalent element used in the art for similar purposes and obvious to the skilled person. Therefore, it is the application of known features in the prior art into claimed invention in an obvious way.  Therefore, there is no inventive step.

Why to do: 

• Ascertain the chances of infringing an existing patent
• Assess the threat of infringement of a pending patent application
• Answer the question: “What is the probability of getting sued for patent infringement?”
• If there is a threat of infringement, the product/process may be commercialized after assessing & analyzing  the following options:

1. Invalidation Search
2. Revoking the patent
3. Purchasing the patent 
4. Licensing in
5. Cross Licensing
6. Patent Pools
7. Designing Around

When to do: 

• Prior to commercializing a product/process

Examples:

1. In Atlas Powder Co. v. E.I. du Pont De Nemours & Co, 750 F.2d 1569 (Fed. Cir. 1984), the court expressed the principle in mathematical terms: 

• Prior Patent: Atlas patents A + B + C 
• New Patent: Du Pont then patents the improvement A + B + C + D
• If Du Pont manufactures/uses/sells A + B + C + D, it would directly infringe Atlas’s claims to A + B + C

2. Modifications in devices may be separately patented, however, it may infringe the claims of the basic patent.

• Prior Patent: For the invention of a “pencil”

 A device comprising: 

• a pencil; 
• an eraser attached to one end of the said pencil.

• New Patent: For the invention of an “improved pencil”

 A device comprising: 

• a pencil; 
• an eraser attached to one end of said pencil; and 
• a light attached to the proximal centre of the said pencil.

• Prior Patent: A novel, useful and nonobvious product ‘X’
• New Patent: A novel, useful and non-obvious process for making product ‘X’
• The new patent may infringe the prior patent on using the product or offering to sell or selling the product.

Why to do: 

• Evaluate the chances of invalidating a specific patent of a competitor
• Invalidation of a competitor’s patent may strengthen the client’s patent portfolio 
• The first line of defence in a patent infringement suit 

When to do: 

• On receiving an infringement notice
• Prior to filing a revocation petition
• Prior to licensing, buying or selling a patent – for a higher negotiating power

Example:

• Prior Patent: A composition comprising halide ions and …..

• New Patent: A composition comprising chloride ions and …..

• Enablement: A claim for a composition would be void if the specification only identified the substances that were to be combined without stating their relative proportions, or if it stated the proportions ambiguously.
• Enablement requires more than tossing out general ideas that may or may not be workable – need to provide enough information to enable persons skilled in the art to carry out the invention without undue experimentation.

Why to do: 

• Helps in decision making & in articulating a business strategy
• Identifies areas for future investment & business opportunities
• Patent information can be utilized by companies for:

1. Technical information
2. Business/ economic information
3. Legal information

When to do: 

• Prior to starting a new project/venture