Searching prior art with the help of Inventor, assignee and Classification

Searching through the relevant keywords is safest approach for locating relevant prior art as there is a very high chance of finding prior art, but it is not the best approach. There are chances that some of the prior art may have been missed because of the different patent language or short description.

There are some other strategies that a good patent searcher should work out on. some of them are to use Inventors, assignees and Classifications, first of all shortlist all the closest patents you have found till date and then find their inventors, assignees and classifications (IPC, US, F terms etc). You can add some of the assignees by simply searching for the companies which are active in that field. 

Use this search engine for searching relevant US classes and use TACSY for searching relevant IPC classes. Once you have the list of Inventors, Assignees and Classifications you are ready to search.

PS: Make at-least one query which is only based on classification, and don't forget to check for the NPL that those inventors have published. You might find something interesting.

PCT VS The Paris Convention

Some advantages of the PCT are:

A single application can be filed in the applicant’s home country, in the local language.

It delays (by up to 18 months) the need to make a firm decision about the countries where patent protection is to be pursued.

The PCT International Search Report (ISR) often can help applicants determine how likely it is that the application will proceed to grant in individual countries after national phase entry.

Even accounting for the additional cost of the PCT application, slightly lower costs for national phase entry as compared with direct filings means the PCT route for more than a 

couple of countries can actually be cheaper overall.

Typical PCT Procedure:

Novel approach to locate prior art

Locating close prior art provides a critical edge in patent litigation or licensing, by documenting that the patent in question should not have been granted due to anticipatory (102) or obviousness (103) art. However, the prior art defense is contingent upon successfully locating such art. as most law firms have discovered, there is a wide range of outcomes when a prior art search is commissioned. this is dramatically evident when a Joint defense Group commissions 3 searches and compares the results, only to find that while they purport to cover the same materials, the outcomes are dramatically different.

The challenge of assessing the quality of a search is difficult, since attorneys have no way of knowing what critical findings were missed. consequently, they tend to rely on proxies to gauge the quality of a search, e.g. the number of findings uncovered, the total number of databases reviewed, length of the search report, etc. However, there is no evidence that any of these factors correlate with search integrity.

Grace Period : Top Patent Offices

United States of America 

Disclosure not to be taken into consideration in determining novelty and inventive step if it occurred within one year before the filing date in the form of:
1. inventions patented or described in a printed publication in the US or abroad;
2. public use or on sale in the US.

India

An invention shall not be deemed to have been anticipated by:
1. Disclosures at any time before the filing date (priority date) of matter obtained from, and published without the consent of, the inventor or his successor in title (provided that the invention was not commercially worked in India, otherwise than for the purpose of reasonable trial, and that a patent application for the invention was filed in India or a convention country as soon as reasonably practicable thereafter).
2. Other applications made in contravention of the rights of the inventors or his successor in title or public use or publication of the invention without the consent of the inventor or his successor in title by the applicants of such other applications or by any other person in consequence of the disclosure.
3. Disclosures due to the communication of the invention to the Government or to any person authorized by the Government to investigate the invention or its merits, or for the purpose of that investigation.
4. Disclosures within 12 months before the application is made (calculated from the opening of the exhibition or the reading or publication of the paper) by:
(a) display or use of the invention with the consent of the inventor or his predecessor in title at an industrial or other exhibition notified in the Official Gazette;
(b) publication of the invention in consequence of such display or use;
(c) use of the invention during the period of the exhibition without the consent of the inventor or his predecessor in title;
(d) description of the invention in a paper read by the inventor before a learned society, or published with his consent in the transactions of such a society.
5. Disclosures within one year before the filing date (priority date) by public working the invention for reasonable trial, by or with the consent of the applicant or his predecessor in title.

Exclusion From Patentable Subject Matter: Japan & UK

Japan

1. Inventions contrary to public order, morality or public health.
2. Methods for the treatment of humans. 

United Kingdom

1. Discoveries, scientific theories and mathematical methods.
2. Literary, dramatic, musical and artistic works.
3. Aestheticcreations.
4. Schemes, rules and methods for performing mental acts, playing games or doing business. 5. Computer programs. 

6. Presentation of information.
7. Therapeutic, surgical and diagnostic methods for treating humans or animals. 8. Inventions contrary to public policy or morality. 

9. Plant and animal varieties and essentially biological processes for their production, other than:
(a) microbiological methods and products;
(b) inventions whose technical feasibility of the invention is not confined to a particular plant or animal variety;
(c) products consisting of or containing biological material;
(d) processes producing, processing or using biological material;
(e) biological material isolated from its natural environment or produced by a technical process, even if previously occurring in nature.
10. The human body, at any stage of its formation and development or the simple discovery of its elements, including gene sequences, other than elements isolated from the human body or produced by a technical process.
11. Processes for cloning humans; modifying the germ line genetic identity of humans; uses of human embryos for industrial or commercial purposes; and processes for modifying the genetic identity of animals which are likely to cause them suffering without any substantial medical benefit, and animals resulting from such processes.

Patent infringement

infringement constitute of illegal manufacturing, using or even offering for a sale or selling any patented invention within the country or its territories without proper license, or importing it into the country of any patented invention during the term of the patent protection.
 

Protection against Infringement may vary from country to country, as the patent is examined voluntarily by the patent office established in each country or region and may have some difference in patentability, so that a granted patent is difficult to carry out worldwide. In many countries, a use is mandatory to be commercial or to be for a commercial purpose so as to constitute infringement.

When infringement takes place, the filing agent may sue for its relief by Patent drafting in the concerned Federal court. The Patent filing agent may also ask court for a ban to prevent the continuation of the patent infringement and may also ask the court for reimbursement of damages occured due to the patent infringement.

Exclusions from Patentable Subject Matter - India

The exclusion from Patentable Subject Matter for India Patent Office are:

1. Inventions which are frivolous or obviously contrary to well established natural law.
2. Inventions use or commercial exploitation of which is contrary to law or morality or causes serious prejudice to human, animal, or plant life or health or to the environment.
3. Discoveries of a scientific principle or formulation of an abstract theory or discovery of any living thing or non- living substance occurring in nature.
4. Mere discovery of a new form of a known substance which does not enhance known efficacy, or the mere discovery of any new property or new use for a known substance or of the mere use of a known process, machine or apparatus unless such known process results in a new product or employs at least one new reactant.
5. Substance obtained by a mere admixture resulting only in the aggregation of the properties of the components thereof or a process for producing such substance.
6. Mere arrangement or re-arrangement or duplication of known devices each functioning independently in a known way.
7. Agricultural and horticultural methods.
8. Any processes for medicinal, surgical, curative, prophylactic , diagnostic, therapeutic or other treatments of humans or any process for a similar treatments of animals or plants to render them free of disease or increase economic value.
9. Plants and animals in whole or any part thereof other than microorganisms, but including seeds, varieties and species and essentially biological processes for production or propagation of plants and animals.
10. Mathematical or business method or a computer program per se or algorithms.
11. Literary, dramatic, musical or artistic work or any other aesthetic creation whatever.
12. Mere scheme or rule or method of performing mental act or method of playing game.
13. Presentation of information.
14. Topography of integrated circuits.
15. Invention which, in effect, is traditional knowledge or which is an aggregation or duplication of known properties of traditionally known component(s).
16. Inventions relating to atomic energy.