IP Due Dilligence Search Strategy and Claim Tree Analysis
Patentability versus Freedom to operate
Understanding IP Due Dilligence. This material copyrighted by the Berne convention
Understanding IP Due Dilligence. This material copyrighted by the Berne convention
Many biodesing students will find this article useful with all the relevant information gathered in one place. I have over 40 issued US patents and many of them successfully developed into surgery ready products. This article is based on my working medtech design experience for surgery ready product and my experience in patent filing.
Many biodesing students will find this article useful with all the relevant information gathered in one place. I have over 40 issued US patents and many of them successfully developed into surgery ready products. This article is based on my working medtech design experience for surgery ready product and my experience in patent filing.
Patent Search and IP Due Diligence Cannot be
Separated from the whole Design Process.
Patent Search and IP Due Diligence Cannot be
Separated from the whole Design Process.
It is a mistake to do patent search, patentability and freedom to operate determination at the end of the product development cycle.
Patent Search and IP Due Diligence should be part of your product development process. Here is a brief outline of the recommended process for patent due diligence.
It is a mistake to do patent search, patentability and freedom to operate determination at the end of the product development cycle.
Patent Search and IP Due Diligence should be part of your product development process. Here is a brief outline of the recommended process for patent due diligence.
- After determination of problem statement, deep dive, brain storming and concept selection you should have a broad feel of what form your product will take. Do an intial key word search based on intented use, key components and features. Such key word search will yield many hits and some may not be relevant. What can you do with this information?
- This result will give you state of art of the present technology. You can summarise the form factors of each these patents of the inventions in a tabular form. Here is how.(Under construction)
- This can be the basis of your new design for an improved version with new innovations over the current state of art. In the above table also list out the patent classifications for each of the patents.
- Then do a secodary search using the most common patent classifications and this will yield a shorter list of patents that are more relevant. You can then select from this reduced list the most relevant patents.
- As you develop your product you need to define the structure of your invention and then list the struture out in order of rank. To see how this is done, select a few of the most relevant patents and look at the claim tree for these these patents from Patsnap. This will guide you how to define the structure of your invention.
Indentify the top structures of your invention that will make it work and then identify the dependent secondary structures that are good to have and make the invention work even better.
1. What are your product features?
1. What are your product features?
As you develop your product you need to define what your invention/product is by listing the struture and features of your product in order of rank. To see how this is done, select a few of the most relevant patents and look at the claim tree for these these patents from Patsnap. This will guide you how to define the structure of your invention. PatSnap has super convenient tool that will automatically generate a claim tree for your patent of interest.
In your draft patent application identify the top structures of your invention that will just make the invention work which will be the independent claim and then identify the dependent secondary structures that are good to have and make the invention work even better. The latter will be the dependent claims. Going through this exercise will help you design better products and focus on what works and what doesn't work.
As you develop your product you need to define what your invention/product is by listing the struture and features of your product in order of rank. To see how this is done, select a few of the most relevant patents and look at the claim tree for these these patents from Patsnap. This will guide you how to define the structure of your invention. PatSnap has super convenient tool that will automatically generate a claim tree for your patent of interest.
In your draft patent application identify the top structures of your invention that will just make the invention work which will be the independent claim and then identify the dependent secondary structures that are good to have and make the invention work even better. The latter will be the dependent claims. Going through this exercise will help you design better products and focus on what works and what doesn't work.
Embodiement
Embodiement
Your design must have a structure in patent lingo it is called "embodiment"
Your design must have a structure in patent lingo it is called "embodiment"
Patent sepcification consist of
1. Structure
2. Advantage
3. Utility
4. How it function
5. Why not obvious
Claim is what you own.
Patent sepcification consist of
1. Structure
2. Advantage
3. Utility
4. How it function
5. Why not obvious
Claim is what you own.
The advantage of doing a patent search early in your product design process is that you became familiar with the state of art of existing competing products and their features. This will help you add, subtract or modify features that will make it an even better product. You will also have some idea of patentability and freedom to operate from the beginnig so that you won't come with a product that is not commercially viable.
The advantage of doing a patent search early in your product design process is that you became familiar with the state of art of existing competing products and their features. This will help you add, subtract or modify features that will make it an even better product. You will also have some idea of patentability and freedom to operate from the beginnig so that you won't come with a product that is not commercially viable.
In your draft patent application you need to define the structure and features of your invention in a ranked order of features or "elements". Your invention is basically defined as a series of independent and dependent claims referencing your patent specification.
In your draft patent application you need to define the structure and features of your invention in a ranked order of features or "elements". Your invention is basically defined as a series of independent and dependent claims referencing your patent specification.
Independent vs Dependent Claim
Independent vs Dependent Claim
Each independent claim consist of a number of features or elements. A dependent claim always reference an independent claim. The dependent claim has all the elements of the referencend independent claim plus either
Each independent claim consist of a number of features or elements. A dependent claim always reference an independent claim. The dependent claim has all the elements of the referencend independent claim plus either
- An additional element (feature) OR
- A modification of an existing element (feature) as illustrate below.
This type of dependent claim here usually have the phrase "in which"
These two concepts are illustrated in two diagrams below.
These two concepts are illustrated in two diagrams below.
Type I dependent claim with an additional element (feature).
Type I dependent claim with an additional element (feature).
Often this type of claim has the phrase "further including" of the additional element.
Often this type of claim has the phrase "further including" of the additional element.
Type II dependent claim with a modification of an existing element (feature).
Type II dependent claim with a modification of an existing element (feature).
Often this type of claim has the phrase "in which" of an element is modified.
Often this type of claim has the phrase "in which" of an element is modified.
2. Patentalibity
2. Patentalibity
Patentalibity is based solely on prior art. Prior art is any information in the public domain whether it is published in the academic literature or otherwise. Even expired patent or abandoned patent anywhere in the world once published it will still be considered as prior art and may bar you from getting a patent issued.
Patentalibity is based solely on prior art. Prior art is any information in the public domain whether it is published in the academic literature or otherwise. Even expired patent or abandoned patent anywhere in the world once published it will still be considered as prior art and may bar you from getting a patent issued.
So it may be ironic that based on expired or abandoned patent you may give freedom to operate but may not be patentable.
So it may be ironic that based on expired or abandoned patent you may give freedom to operate but may not be patentable.
So early on you not only need to search patent publications but also academic publications. This is to give you a good idea what is the state of art the product you are going to design. Based on these state of art search result, create a table of the various design form factor. On this basis you can add, substrate, modify and substitue new features using various design methodoly to come up with a novel and improved design.
So early on you not only need to search patent publications but also academic publications. This is to give you a good idea what is the state of art the product you are going to design. Based on these state of art search result, create a table of the various design form factor. On this basis you can add, substrate, modify and substitue new features using various design methodoly to come up with a novel and improved design.
3. FREEDOOM TO OPERATE
3. FREEDOOM TO OPERATE
or FTO means you will be able to sell, manufacture or import a product without being sued by a patent holder who holds a monopoly right to do so.
or FTO means you will be able to sell, manufacture or import a product without being sued by a patent holder who holds a monopoly right to do so.
The term overlapping claims and similar features have been overused and misused. It is best to avoid using these terms altogether when determing FTO. As shown below even if there is over lapping claims and similar features you may very well have freedom to operate.
The term overlapping claims and similar features have been overused and misused. It is best to avoid using these terms altogether when determing FTO. As shown below even if there is over lapping claims and similar features you may very well have freedom to operate.
This is a rather tricky issue and requires, the understanding of claim structures and comparing the structure of your invention with the patent claims of the patent holder.
This is a rather tricky issue and requires, the understanding of claim structures and comparing the structure of your invention with the patent claims of the patent holder.
You first need to define the structure of your invention as outlined in "1. What is your product?"
You first need to define the structure of your invention as outlined in "1. What is your product?"
Then review the claim trees of the "refined short list of relevant patents" as stated above. For FTO due diligence you do not need to read each of the relevant patent form end to end. Patsnap provide a great short cut tool in which the claim tree is abstracted by their claim tree algorithm. You do not have to read each relevant patent from end to end but just be familiar with the claim trees of the relevant patents and the structure (features) of your own invention.
Then review the claim trees of the "refined short list of relevant patents" as stated above. For FTO due diligence you do not need to read each of the relevant patent form end to end. Patsnap provide a great short cut tool in which the claim tree is abstracted by their claim tree algorithm. You do not have to read each relevant patent from end to end but just be familiar with the claim trees of the relevant patents and the structure (features) of your own invention.
You cannot simply look at a patent and just say that it have similar features and therefore there is no freedom to operate. Even if your invention have similar features you may still have freedom to operate depending on the patent claims. There is a great misunderstanding that if your product has similar features or "overlapping" claims with an issued patent then you don't have freedom to operate. Please see illustration below for clarification of this point.
You cannot simply look at a patent and just say that it have similar features and therefore there is no freedom to operate. Even if your invention have similar features you may still have freedom to operate depending on the patent claims. There is a great misunderstanding that if your product has similar features or "overlapping" claims with an issued patent then you don't have freedom to operate. Please see illustration below for clarification of this point.
You only have no freedom to operate when all the features in your invention overlap all the elements (features) in at least one claim inthe examined patent.
It is better to avoid using misleading terms like "overlapping claims" or "similar features" therefore wrongly conclude that there is no freedom to operate.
It is better to avoid using misleading terms like "overlapping claims" or "similar features" therefore wrongly conclude that there is no freedom to operate.
As seen in the illustration above, even when there are many similars features in your invention with another invention that has different sets of claim. You still have FTO because you have a feature 1 that is not in the other patent claim. Even if they patent has feature 1 decribed in their patent specification but they did not claim it. Moreover you don't have feature 5 in your invention.
As seen in the illustration above, even when there are many similars features in your invention with another invention that has different sets of claim. You still have FTO because you have a feature 1 that is not in the other patent claim. Even if they patent has feature 1 decribed in their patent specification but they did not claim it. Moreover you don't have feature 5 in your invention.
