The document discusses how to mine the patent system to improve research and commercialization. It recommends making a patent search a compulsory part of every science project's literature survey. It describes the international patent classification system and how to find patent information in various databases. It discusses using patent mapping to find a research niche and identifies potential interested parties like assignees. It also considers other intellectual property rights beyond patents.

1. Mining the patent system to improve research and its commercialization Malcolm Spence Senior Coordinator, Intellectual Property, Science & Technology Issues malcolm.spence@crnm.org

2. OVERVIEW Patents – what is the real deal? The International Patent Classification System Patent information – where to find what? Patent mapping – finding a research niche Inventions – who might be interested? Thinking beyond patents 2 Mining the patent system to improve research and its commercialization 2/13/2011

3. Recommendation Make a patent search a compulsory part of every science project’s literature survey 3 Mining the patent system to improve research and its commercialization 2/13/2011

4. The Patent Deal To be patentable, research result needs to: Be novel; AND Include “an inventive step” (called by some “non-obviousness”); AND Have “a technical effect” (called by some “industrial applicability”) 4 Mining the patent system to improve research and its commercialization 2/13/2011

5. The Patent Deal Granted the legal right to exclude others from using ‘invention’ providing that full disclosure of the invention is made. 5 Mining the patent system to improve research and its commercialization 2/13/2011

6. The Patent Deal 35 U.S.C. § 112: … a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention 6 Mining the patent system to improve research and its commercialization 2/13/2011

7. The Patent Deal The Anatomy of a Patent Administrative information - Inventor’s name and nationality - Assignee’s name - Classification code for the invention - Priority date claiming novelty - Prior art references - Abstract of invention - Date of Grant 7 Mining the patent system to improve research and its commercialization 2/13/2011

8. The Patent Deal The Anatomy of a Patent The Specification - The problem being addressed - The current state of the art - Summary of the invention - Detailed description (drawings) - Claims 8 Mining the patent system to improve research and its commercialization 2/13/2011

9. Patent Classification Each Patent Office determined novelty and inventiveness by examining each application against “the state of the art” – their collection of patents and other published documents (like journals) 9 Mining the patent system to improve research and its commercialization 2/13/2011

10. International Patent Classification Globalisation – each office had to re-classify each others patents, so negotiated an International Patent Classification, the Strasbourg Agreement of 1971 as amended in 1979 administered by the United Nations Specialised Agency for intellectual property, the World Intellectual Property Organisation 10 Mining the patent system to improve research and its commercialization 2/13/2011

11. International Patent Classification WIPO http://www.wipo.int/ 11 Mining the patent system to improve research and its commercialization 2/13/2011

12. International Patent Classification Version 2009 Guide Objectives; History; Reform; Assistance in its use 12 Mining the patent system to improve research and its commercialization 2/13/2011

13. International Patent Classification Sections [Sub-sections] Classes Sub-classes Groups Sub-groups 13 Mining the patent system to improve research and its commercialization 2/13/2011

14. Sections of the IPC A HUMAN NECESSITIES B PERFORMING OPERATIONS; TRANSPORTING C CHEMISTRY; METALLURGY D TEXTILES; PAPER E FIXED CONSTRUCTIONS 14 Mining the patent system to improve research and its commercialization 2/13/2011

15. Sections of the IPC F MECHANICAL ENGINEERING; LIGHTING; HEATING; WEAPONS; BLASTING G PHYSICS H ELECTRICITY 15 Mining the patent system to improve research and its commercialization 2/13/2011

16. Sub-Sections of the IPC Section A – HUMAN NECESSITIES Agriculture Foodstuffs; Tobacco Personal or Domestic Articles Health; Amusement 16 Mining the patent system to improve research and its commercialization 2/13/2011

17. Principle of Hierarchy G01N 33/483 • • Physical analysis of biological material 33/487 • • • of liquid biological material 33/49 • • • • blood 33/50 • • Chemical analysis of biological material e.g. blood 17 Mining the patent system to improve research and its commercialization 2/13/2011

18. Principle of Hierarchy H01S 3/00 Lasers 3/09 • Processes or apparatus for excitation, e.g. pumping 3/091 • • by optical pumping 3/094 • • • by coherent light 18 Mining the patent system to improve research and its commercialization 2/13/2011

19. Principle of Hierarchy Section: H ELECTRICITY Class: H01 BASIC ELECTRIC ELEMENTS Subclass: H01F MAGNETS Main group: H01F1/00 Magnets or magnetic bodies characterised by the magnetic materials therefor 19 Mining the patent system to improve research and its commercialization 2/13/2011

20. Principle of Hierarchy One-dot subgroup: 1/01 • of inorganic materials Two-dot subgroup: 1/03 • • characterised by their coercivity Three-dot subgroup: 1/032 • • • of hard magnetic materials Four-dot subgroup: 1/04 • • • • Metals or alloys Five-dot subgroup: 1/047 • • • • • Alloys characterised by their composition Six-dot subgroup: 1/053 • • • • • • containing rare earth metals 20 Mining the patent system to improve research and its commercialization 2/13/2011

21. Principle of Hierarchy Group H01F1/053 actually concerns “magnets of inorganic materials characterised by their coercivity, comprising hard magnetic alloys specifically containing rare earth metals”. 21 Mining the patent system to improve research and its commercialization 2/13/2011

22. Patent Databases http://www.wipo.int/wipogold/en/ http://www.epo.org/patents/patent-information/free.html http://www.uspto.gov/patents/process/search/ 22 Mining the patent system to improve research and its commercialization 2/13/2011

23. Patent Databases Thomson Reuters MicroPatent http://www.micropatent.com/static/index.htm Aureka 23 Mining the patent system to improve research and its commercialization 2/13/2011

24. Overview Patents – what is the real deal? The International Patent Classification System Patent information – where to find what? Patent mapping – finding a research niche Inventions – who might be interested? Thinking beyond patents 24 Mining the patent system to improve research and its commercialization 2/13/2011

25. Patent Mapping ipCapital Group Intellectual property strategy advisors http://www.ipcg.com/?file=Patent_Maps 25 Mining the patent system to improve research and its commercialization 2/13/2011

26. Assignees and Angels The Anatomy of a Patent Administrative information - Inventor’s name and nationality - Assignee’s name - Classification code for the invention - Priority date claiming novelty - Prior art references - Abstract of invention - Date of Grant 26 Mining the patent system to improve research and its commercialization 2/13/2011

27. Overview Patents – what is the real deal? The International Patent Classification System Patent information – where to find what? Patent mapping – finding a research niche Inventions – who might be interested? Thinking beyond patents 27 Mining the patent system to improve research and its commercialization 2/13/2011

28. International Licensing Licensing Executives Society International http://www.lesi.org/Article/Home.html 28 Mining the patent system to improve research and its commercialization 2/13/2011

29. Other IP Rights Duration of Patent: Twenty (20) years from Priority Date Duration of Trademark: Ten (10) years from Priority Date BUT renewable indefinitely 29 Mining the patent system to improve research and its commercialization 2/13/2011

30. Other IP Rights Protection of New Plant Varieties UPOV (Plant Breeders Rights) Trees, vines and shrubs 30 Mining the patent system to improve research and its commercialization 2/13/2011

31. Other IP Rights Duration of Copyright: Fifty (50) to Seventy (70) years from publication (manuals containing know-how) Duration of Trade Secrets: Indefinite (as long as you can show its commercial value and that you make efforts to keep it secret) 31 Mining the patent system to improve research and its commercialization 2/13/2011

32. MORE INFORMATION? Please visit our Website: http://www.crnm.org Email: jamaica.office@crnm.org barbados.office@crnm.org 32 2/13/2011 Mining the patent system to improve research and its commercialization