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E4020 Week 4 - 2 Presentation - 2019

This document provides an agenda and overview for a class on protection of industrial and intellectual property. It discusses key points about patent claims, including requirements for claims. It analyzes claims in US Patent 5,578,325 as an example. It describes an exercise for students to draft claims for an invented device. It also covers prior art, prior art searches, and how to conduct patent searches using the USPTO and Google Patents resources.

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Amadeus Huang
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© © All Rights Reserved
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88 views

E4020 Week 4 - 2 Presentation - 2019

This document provides an agenda and overview for a class on protection of industrial and intellectual property. It discusses key points about patent claims, including requirements for claims. It analyzes claims in US Patent 5,578,325 as an example. It describes an exercise for students to draft claims for an invented device. It also covers prior art, prior art searches, and how to conduct patent searches using the USPTO and Google Patents resources.

Uploaded by

Amadeus Huang
Copyright
© © All Rights Reserved
We take content rights seriously. If you suspect this is your content, claim it here.
Available Formats
Download as PPTX, PDF, TXT or read online on Scribd
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Protection of Industrial and Intellectual Property

Patents (Cont’d)

Week 4 – Part 2

Ken Spall October 1, 2019


Agenda

• Debrief on reading assignment

• ”How to read a patent,” CAMBIA Intellectual Property Resource


http://www.bios.net/daisy/patentlens/g3/tutorials/202.html

• Discussion of USP 5,578,325

• Claims construction exercise

• Prior art and prior art searches

• Patent search exercise

-2-
Key points on patent claims1,2

• Patent claims must:


• be of different scope than another claim,
• “distinctly claim” the invention,
• “clearly delineate the precise boundaries” of the claim,
• be written as a single sentence
• preamble naming the thing that is claimed,
• body defining elements or steps of the named thing,
• using transition phases, such as “comprising” or “consisting of”

• Claims can be independent (i.e. don’t depend on others) or dependent


• Dependent claims “refer back to or further limit another claim or claims”
• Provide ‘specific embodiment’ of an invention
1
“Bowman: There is a fine art to reading patents” retrieved from http://www.iplawforstartups.com/how-to-read-a-patent-like-a-pro/
2
”How to read a patent,” CAMBIA Intellectual Property Resource http://www.bios.net/daisy/patentlens/g3/tutorials/202.html

-3-
Discussion of U.S. Patent 5,578,325

• How have the inventors addressed the key requirements for patentability?

• Utility

• Novelty

• Non-obvious/inventive step

• Adequately described/enabled

• What are the independent claims? What is their scope?

• How are dependent and independent claims linked?

• Which dependent claims provide “specific embodiments” of the invention?

-4-
Claim Construction Group Exercise

• Imagine an ‘invention’:
• a pen that both writes on a surface and transmits to a signal to computer,
phone or tablet

• Craft a main patent claim for this ‘invention’

• Add at least one dependent claim to the main claim

/
1
”How to read a patent,” CAMBIA Intellectual Property Resource http://www.bios.net/daisy/patentlens/g3/tutorials/202.html

-5-
Prior Art and Patent Searches

Prior art is “any body of knowledge relating to the invention”

• Why perform prior art searches?


• Find identical, similar or partially similar inventions,
• Learn more about the field of the invention,
• Learn more about competitors,
• Avoid infringement,
• Help write patent applications.

1
Bellis, M., http://inventors.about.com/od/hottosearch/a/Patent_Search.htm

-6-
Conducting A Patent Search – USPTO Resources1

• Perform a patent search online. The U.S. Patent and Trademark Office
lists patents from January 1, 1976 and forward (http://patft.uspto.gov/).

• Write a Description of the Invention

• Use the Website’s Site Search Text Box

• Review Classification Definitions

• Retrieve Issued Patents Using CPC Classifications2

• Conduct In-Depth Review of Selected Patents

• Retrieve and Review U.S. Published Patent Applications

• Broaden Your Search


• Foreign patents and applications
• Literature in the public domain
1
https://www.uspto.gov/video/cbt/ptrcsearching /
2
Note that CPC codes are applicable to US utility patents and applications filed in 2013 and later years; see next slide for details
-7-
Notes on Classification Codes – USPC and CPC1

Cooperative Patent Classification2 (CPC) U. S. Patent Classification3 (USPC)

• Developed by USPTO and European • Legacy USPTO system


Patent Office (EPO)

• In use for utility patents since 2013 • Use for utility patents before 2013

• Continue to use for design and


plant patents

• Applicable to both patents and patent • Applicable to both patents and


applications patent applications

1
Note that there is also an International Patent Classification (IPC) system
2
https://www.uspto.gov/web/patents/classification/cpc.html
3
https://www.uspto.gov/web/patents/classification/selectnumwithtitle.htm
-8-
Conducting A Patent Search – Google Patents

• Perform a patent search using Google Patents (


https://www.google.com/advanced_patent_search)

• Navigate to website

• Enter search parameters


• For patent application numbers leave out “/” and spaces

• View returned hits

• Click on the link for the document you wish to review


• Note the “Find Prior Art” and “Similar” buttons

1
https://www.youtube.com/watch?v=m4xbTMOYOfQ

-9-
Patent Search Examples

• Search USPTO database for USP 5,578,325

• Enter patent number in Term 1 box; hit submit; note number of hits

• Enter patent number in Term 1 box; enter “Patent Number” in Field 1 box
using the pull-down list; note the patent document

• Enter patent number in Term 1 box; enter “Langer” in Term 2 box; enter
“Inventor” in Field 2 box using the pull-down list; note number of hits

• Search Google Patents for US Patent Application 2016/0362706 A1

• Enter “West” in Inventor box; enter “C12P1/04” in Cooperative Classification


box; click Goggle Search; note number of hits

• Enter “20160362706” in Patent number box; Click Google Search; note link
to patent document

• Click on link and then click on “Find Prior Art”

- 10 -

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