Search Strategies
Chemistry and Intellectual Property - Catalysing Innovation
Dr. Peter Burkhardt
Malta 15.02.2011
What's inside the Mind of an Examiner?
clarity
patentability
novelty
Added
Subject-matter
Structure of the presentation
• Understanding the invention
• Search strategy
Understanding the invention
Description
Drawings
Claims
Claims
Description
• Specific embodiments?
• Acknowledged prior art?
`Feature reservoir´
The full picture
"Patent searching is an art...
... which is practiced by
applying common sense,
a working knowledge of patent laws,
familiarity with the technology and
familiarity with the databases and classification of
document sources.
The order of these elements shifts depending on the
search subject"
© Prior Art searches Inc., Arlington VA, USA
Model search strategy
Intuitive and iterative process
Analyze application
End of
search
Quick search
Analyze results:
- keywords, classes
- scope/focus search
Complete the search
- select databases
- formulate query
- retrieve results
Written opinion
analyze results:
- fields covered,
- relevance
of documents
Formulate opinion
Analyze the application
•
Determine what needs to be searched
– read the claims
– identify the technical features of the solution(s)
– try to identify the "invention" (use the description when necessary)
•
Classify the claimed subject matter
– ECLA, IPC.
•
Collect keywords, synonyms, etc.
•
Identify applicant and inventors
Quick search
The Aim of the quick search is to get an quick overview of the field.
•
Keyword search in e.g. Google, Scirus, PubMed.
•
Search for publications from the inventors and applicant.
– scientific literature.
– patent literature.
– applicant web-site.
•
Search for a recent review on the subject.
•
Collect more keywords.
Complete the search
•
•
Sequence/Structure searches,
– large proteins/polynucleotides
EBI
– small peptides/polynucleotides
Chem. Abstr., Registry
– structure
CA, Registry, Beilstein
Search patent and non-patent literature
(full-text and bibliographic databases),
– classification
– keywords, synonyms, etc.
– inventors/applicant
•
Chemical Abstracts
– keywords
– thesaurus
Written opinion.
•
Analyze the documents.
– new keywords?
– additional players in the field?
– citing/cited documents.
– select the closest prior art.
•
Determine the objective technical problem to be solved.
– inventive effect?
– which feature(s) is/are responsible?
•
Everything covered?
•
Formulate opinion.
– any missing links?
PROCEDURAL
EFFICIENCY
clarity
SERVICE
patentability
STRATEGY
novelty
QUALITY
Added
Subject-matter
Questions?
www.epo.org