The Dolcera Blog

1. Basic Patent Information
2. Using Patent Information for the Benefit of your SME
3. Technological Powerhouse or Diluted Competence: Techniques for Assessing Mergers via Patent Analysis
4. The Use of Patent Analysis in Competitive Intelligence
5. Assessing the R&D management of firms by patents citation: Evidence from the US patents citation
6. Patents searching: The web drags patents into 21st century
7. Patent Information and Sustainable Development
8. Tackling Management Problems with Patent Data
9. Basic Intellectual Property Research on the Web

Applicant

The person or company that applies for the patent and intends to “work” the invention (i.e. to manufacture or licence the technology). In most countries the inventor(s) does not necessarily have to be the applicant. In the United States, applicants must be the inventor(s), except in a few exceptional circumstances (e.g. legal representatives of a deceased inventor may make a patent application).

Applicant country

The applicant is the patentee at the date of the application. When counting patents by geographical area, they can be attributed to the country of residence of the applicant. Patent counts by applicant concentrate on patent “ownership” (i.e. the number of patents owned by residents of each country). For example, a patent application filed by IBM Belgium is allocated to Belgium, even though the ultimate ownership of IBM Belgium might be in another country.

Application for a patent

To obtain a patent, an application must be filed with the authorised body (Patent Office) with all the necessary documents and fees. The patent office will conduct an examination to decide whether to grant or reject the application.

Application date

The patent application date is the date on which the patent office received the patent application.

Citations

Citations may be made by the examiner or the applicant/inventor. They comprise a list of references that are believed to be relevant prior art and which may have contributed to the “narrowing” of the original application. The examiner can also cite references from technical journals, textbooks, handbooks and sources. The citations practices of the EPO differ substantially from the USPTO. Applicants to USPTO are legally required to include a full list of prior art known or believed to be relevant (“duty of candor”). At EPO, no such requirement exists for applicants.

Claim(s)

These define the invention that the applicant wishes to protect. A main claim will define the invention in its broadest form, by including its essential technical features. Further “dependant” claims can then relate to additional features of the invention.

Continuation

This is mainly relevant to the USPTO. Continuations are second or subsequent applications for the same invention claimed in a prior application and filed before the first application becomes abandoned or granted. Continuations must claim an invention which is part of or directly derived from the original application to gain the benefit of the parent filing date.

Designated countries

Countries in which patent applicants wish to protect their invention. This concept is specific to European patent applications and international patent applications filed under the Patent Cooperation Treaty (PCT). Since January 2004, all international applications filed designate by default all PCT contracting countries bound by the PCT treaty as of the filing date. For EPO patent applications, the applicant has to designate specific countries. However, if the applicant pays designation fees for seven countries, then it is considered that the designation fees for all the EPC member states have been paid and all the EPC countries will be automatically selected. However, designation of a country does not automatically provide patent rights in that country. A patent has to be validated in the designation country for it to be effective.

Disclosure

The first public disclosure of details of an invention. This may be deliberately revealed outside the patent system to make the invention unpatentable, or what is described in a patent application. In return for a patent (monopoly rights for a limited time period), the applicant must make a full disclosure of the invention for which protection is sought.

Equivalent

A patent that relates to the same invention and shares the same priority application as a patent from a different issuing authority.

European Patent Convention (EPC)

The Convention on the Grant of European Patents (European Patent Convention, EPC) was signed in Munich 1973 and entered into force in 1977. As a result of the EPC, the European Patent Office (EPO) was created to grant European patents. Currently, there are 31 EPC member countries (as at December 2005). In addition, extension agreements exist with five countries, which allow the possibility of extending European patents to those countries upon request. EPC member countries are Austria, Belgium, Bulgaria, Cyprus, the Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Iceland, Ireland, Italy, Latvia, Liechtenstein, Lithuania, Luxembourg, Monaco, the Netherlands, Poland, Portugal, Romania, the Slovak Republic, Slovenia, Spain, Sweden, Switzerland, Turkey and the United Kingdom. EPC extension countries are Albania, Bosnia and Herzegovina, Croatia, the Former Yugoslav Republic of Macedonia, and Serbia and Montenegro.

European Patent Office (EPO)

The European Patent Office (a regional patents office) was created by the EPC to grant European patents, based on a centralised examination procedure. By filing a single European patent application in one of the three official languages (English, French and German), it is possible to obtain patent rights in all the EPC member and extension countries by designating the countries in the EPO application. The EPO is not an institution of the European Union.

European patent

A European patent can be obtained for all the EPC countries by filing a single application at the EPO in one of the three official languages (English, French or German). European patents granted by the EPO have the same legal rights and are subject to the same conditions as national patents (granted by the national patent office). It is important to note that a granted European patent is a “bundle” of national patents, which must be validated at the national patent office for it to be effective in member countries. The validation process could include submission of a translation of the specification, payment of fees and other formalities at the national patent office. This is because once a European patent is granted, competence is transferred to the national patent offices.

Expiry date

The date when a patent has run its full term in a country and is no longer valid.

First to file

A patent system in which the first inventor to file a patent application for a specific invention is entitled to the patent. This law is increasingly becoming the standard for countries adhering to the so-called Trade-Related aspects of Intellectual Property (TRIPs) guidelines. At the EPO and JPO, patents are awarded on the first to file basis, whereas at the USPTO, patents are awarded on the first to invent basis.

First to invent

In the first to invent system a patent is awarded to the first person who made the invention, even if another person filed for a patent before the person who invented first.

Grant

A temporary right given by the authorised body for a limited time period (normally 20 years) to prevent unauthorised use of the technology outlined in the patent. A patent application does not automatically give the applicant a temporary right against infringement. A patent has to be granted for it to be effective and enforceable against infringement.

Grant date

The date when the patent office issues a patent to the applicant. On average it takes three years for a patent to be granted at the USPTO and five years at the EPO.

GERD

Gross domestic expenditure on research and development.

Infringement

Unauthorised use of a patented invention.

Intellectual property rights (IPR)

IPR allows people to assert ownership rights on the outcomes of their creativity and innovative activity in the same way that they can own physical property. The four main types of intellectual property rights are: patents, trademarks, design and copyrights. International patent application Patent applications filed under the Patent Cooperation Treaty (PCT) are commonly referred to as international patent applications. However, an international patent (PCT) application does not result in the issuance of “international patents”, i.e. at present, there is no global patent system that is responsible for granting international patents. The decision of whether to grant or reject a patent application filed under the PCT rests with the national or regional (e.g. EPO) patent offices.

International Patent Classification (IPC)

The International Patent Classification, which is commonly referred to as the IPC, is based on an international multilateral treaty administered by WIPO. The IPC is an internationally recognised patent classification system, which provides a common classification for patents according to technology groups. The IPC is a hierarchical system in which the whole area of technology is divided into a range of sections, classes, subclasses and groups. There are eight sections that are broken down into classes and subclasses. IPC is periodically revised in order to improve the system and to take account of technical development. The current (eighth) edition of the IPC entered into force on 1 January 2006.

Inventive step

An invention is considered to include an inventive step if it is not obvious to a skilled person in the light of the state of the art. At the EPO, the inventive step is one of the most important criteria (along with novelty and industrial application) that need to be fulfilled in order to obtain a patent. The USPTO employs the concept of “non-obviousness”, which is equivalent to the inventive step criterion of the EPO in a legal context.

Inventor country

Country of the residence of the inventor, which is frequently used to count patents in order to measure inventive performance.

Japan Patent Office (JPO)

The JPO administers the examination and granting of patent rights in Japan. The JPO is an agency of the Ministry of Economy, Trade and Industry (METI).

Lapse

The date when a patent is no longer valid in a country or system due to failure to pay renewal (maintenance) fees. Often the patent can be reinstated within a limited period.

Licence

The means by which the owner of a patent gives permission to another person to carry out an action which, without such permission, would infringe on the patent. A licence can thus allow another person to legitimately manufacture, use or sell an invention protected by a patent. In return, the patent owner will usually receive royalty payments. A license, which can be exclusive or non-exclusive, does not transfer the ownership of the invention to the licensee. In certain countries, patent law contains rules on compulsory licenses. The law empowers the courts to decide if a compulsory license should be issued and what should be the terms and conditions.

Licence of right

In some countries it is possible for anyone to get access to the use of patents under licence of right in return for payment of a licence fee. For example, in the United Kingdom, licence of right has been in existence for a number of years. Patent owners are able to get a discount on the renewal fee by offering licence of right for their patents.

Maintenance fees

See renewal fees.

Non-obviousness

See inventive step.

Novelty

If an application for a patent is to be successful, the invention must be novel (new). The invention must never have been made public in any way, anywhere, before the date on which the application for a patent is filed (or before the priority date).

OECD triadic patent families

The triadic patent families are defined at the OECD as a set of patents taken at the European Patent Office (EPO), the Japan Patent Office (JPO) and the US Patent & Trademark Office (USPTO) that share one or more priorities. Triadic patent families data are consolidated to eliminate double counting of patents filed at different offices (i.e. regrouping all the interrelated priorities in EPO, JPO and USPTO patent documents).

Opposition to the grant of a patent

Anyone can file an opposition to the grant of a European patent, within nine months of the mention of the grant of a European patent in the European Patent Bulletin. Opposition to a European patent can be filed on the grounds that: the patent’s subject matter is not patentable, the patent does not disclose the invention clearly and completely, and the patent’s subject matter extends beyond the content of the application filed. The opposition system does not exist in Japan (abolished in 2003) or the United States.

Paris Convention

The Paris Convention for the Protection of Industrial Property was established in 1883 and is generally referred to the Paris Convention. The Paris Convention established the system of priority rights. Under the priority rights, applicants have up to 12 months from first filing their patent application (usually in their own country) in which to make further applications in member countries and claim the original priority date. It was originally signed by eleven countries; currently 169 countries are party to the treaty (January 2005).

Patent

A patent is an intellectual property right issued by authorized bodies to inventors to make use of, and exploit their inventions for a limited period of time (generally 20 years). The patent holder has the legal authority to exclude others from commercially exploiting the invention (for a limited time period). In return for the ownership rights, the applicant must disclose the invention for which protection is sought. The trade-off between the granting of monopoly rights for a limited period and full disclosure of information is an important aspect of the patenting system.

Patentability

Patentability is the ability of an invention to satisfy the legal requirements for obtaining a patent. The basic conditions of patentability, which an application must meet before a patent is granted, are that the invention must be novel, contain an inventive step (or be non-obvious), be capable of industrial application and not be in certain excluded fields (e.g. scientific theories and mathematical methods are not regarded as inventions and cannot be patented at the EPO).

Patent Cooperation Treaty (PCT)

As of July 2005, there were 128 countries party to this treaty, which was signed in 1970 and entered into force in 1978. The PCT provides the possibility to seek patent rights in a large number of countries by filing a single international application (PCT application) with a single patent office (receiving office). The PCT procedure consists of two main phases: (a) an “international phase”; and (b) a PCT “national/regional phase”. PCT applications are administered by the World Intellectual Property Organisation (WIPO).

Pending application

In this case, an application is with the patent office. No decision has been made on whether to grant or reject the patent application (e.g. application is still waiting for search and examination). In 2004, the total number of pending applications at JPO and USPTO amounted to around 610 000 and 756 000, respectively. The number of total pending applications is expected to increase in the coming years.

Prior art

Previously used or published technology that may be referred to in a patent application or examination report, i.e. (a) in a broad sense, technology that is relevant to an invention and was publicly available (e.g. described in a publication or offered for sale) at the time an invention was made; or (b) in a narrow sense, any such technology which would invalidate a patent or limit its scope. The process of prosecuting a patent or interpreting its claims largely consists of identifying relevant prior art and distinguishing the claimed invention from that prior art. The objective of the search process is to identify patent and non-patent documents constituting the relevant prior art in order to determine whether the invention is novel and includes an inventive step.

Priority country

Country where the patent is first filed before being (possibly) extended to other countries.

Priority date

The priority date is the first date of filing of a patent application, anywhere in the world (normally in the applicant’s domestic patent office), to protect an invention. The priority date is used to determine the novelty of the invention, which implies that it is an important concept in patent procedures. For statistical purposes, the priority date is the closest date to the date of invention.

Publication

In most countries, a patent application is published 18 months after the priority date. For example, all pending EPO and JPO patent applications are published 18 months after the priority date. Prior to a change in rules under the American Inventors Protection Act of 1999, USPTO patent applications were held in confidence until a patent was granted. Patent applications filed at the USPTO on or after 29 November 2000 are required to be published 18 months after the priority date. However, there are certain exceptions for the publication of pending patents. For example, an applicant can ask (upon filing) for the patent not to be published by certifying that the invention disclosed in the application has not and will not be the subject of an application filed in another country.

Publication date

The date on which the patent application is published (i.e. the information is available to public). This normally occurs 18 months after the priority date.

R&D

Research and experimental development (R&D) comprises creative work undertaken on a systematic basis in order to increase the stock of knowledge, including knowledge of man, culture and society, and the use of this stock of knowledge to devise new applications.

R&D expenditures

The basic measure of R&D expenditures is “intramural expenditures”; i.e. all expenditures for R&D performed within a statistical unit or sector of the economy.

Renewal fees

Once a patent is granted, annual renewal fees are payable to patent offices to keep the patent in force. In the USPTO these payments are referred to as maintenance fees. For example, all USPTO granted (utility) patents are subjected to maintenance fees which are due after three and half years, seven and half years, and eleven and half years following the date of the original patent grant.

Request for examination

Patent applications filed at the USPTO are automatically examined by a patent examiner to decide whether to grant (or reject) a patent. Patent applications filed at the EPO and JPO do not automatically enter the examination process. The applicant has to submit a request for examination within six months of the application at the EPO and three years at the JPO.

Search report

The search report is a list of citations of all published prior art documents which are relevant to the patent application. The search process, conducted by a patent examiner, seeks to identify patent and non-patent documents constituting the relevant prior art to be taken into account in determining whether the invention is novel and includes an inventive step.

Substantive examination

A full examination conducted by a patent examiner to determine whether to grant or reject the patent application.

Trade-Related Aspects of Intellectual Property Rights (TRIPS)

Agreement on trade-related aspects of intellectual property rights requires members to comply with certain minimum standards for the protection of IPR. But members may choose to implement laws which provide more extensive protection than is required in the agreement, so long as the additional protection does not contravene the provisions of the agreement. The WTO’s TRIPS agreement, negotiated in the 1986-94 Uruguay round, introduced intellectual property rules into the multilateral trading system for the first time.

United States Patent and Trademark Office (USPTO)

The USPTO administers the examination and granting of patent rights in the United States. It falls under the jurisdiction of the U.S. Department of Commerce.

Utility model

Also known as “petty patent”, these are available in some countries (e.g. Japan). This type of patent involves a simpler inventive step than that in a traditional patent and it is valid for a shorter time period.

World Intellectual Property Organization (WIPO)

An intergovernmental organisation responsible for the negotiation and administration of various multilateral treaties dealing with the legal and administrative aspects of intellectual property. In the patent area, the WIPO is notably in charge of administering the Patent Cooperation Treaty (PCT) and the International Patent Classification system (IPC).

A free website provided by Neustel Law Offices, to help patent attorneys, businesses and inventors determine the expiration date and maintenance fee dates for United States utility patents.

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Rambus Inc. scored a key victory Wednesday in its nearly decade-old fight with memory chip makers when a jury found the company did not engage in monopolistic behavior by patenting technologies that eventually became standard in memory chips.

Shares of the Los Altos-based company shot up $7.25, or nearly 39 percent, to $25.86 during regular-session trading on the news. They gained another $1.02 to $26.88 after hours.

The jury’s decision could help Rambus as it tries to collect millions of dollars in royalties on patents some of the biggest memory chip makers claim were fraudulently obtained.

However, Rambus still faces major court battles over those patents, including its attempt to overturn a 2006 Federal Trade Commission ruling that the company deceived a standards-setting committee and created a monopoly in the memory chip industry. Rambus is hoping for a decision by this summer on its appeal.

After a seven-week trial, a jury in U.S. District Court in San Jose decided Wednesday in Rambus’ favor on all three counts it was deliberating, according to Thomas Lavelle, Rambus’ general counsel. The jury deliberated for just one day.

In the lawsuit, originally filed in 2000, chip makers Micron Technology Inc., Hynix Semiconductor Inc. and Nanya Technology Corp. argued that patents held by Rambus for key technologies now included in their chips should be considered invalid. And they said they shouldn’t have to pay royalties to Rambus.

The companies say Rambus engaged in illicit behavior in filing the patents for technologies used in DRAM, or dynamic random access memory, the most common type of memory chip, the part in a personal computer that stores data.

The FTC found Rambus deliberately withheld information from the Joint Electron Device Engineering Council (JEDEC) — an important engineering council which counted Rambus as a member — when the council was developing technical standards for all companies in the computer memory industry.

The FTC found Rambus concealed information about which patents it had secured or knew it would be able to secure.

The council adopted standards that meant other companies hoping to use the technology in question would either have to infringe on Rambus’ patents or buy expensive licenses to use the technology.

Rambus officials were pleased with Wednesday’s decision but acknowledged other sizable hurdles remain before the company can collect royalties.

“The issue of the behavior of Rambus at JEDEC has really been a problem for Rambus, because the manufacturers have turned it into a cause celebre, saying we behaved improperly and illegally,” Lavelle said in an interview. “This jury found that’s not the case. We believe it vindicates what we’ve done.”

Micron said in a statement that it would appeal the jury’s finding.

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In a bid to extend the exclusivity of its $13-billion anti-cholesterol drug Lipitor, Pfizer—the world’s largest drugmaker—has filed two separate patent infringement cases against Ranbaxy Laboratories. Pfizer wants to prevent the Indian company from launching generic versions of Lipitor (Atorvastatin) and Caduet (a combination drug of Lipitor) in the US until 2016.

At present, Ranbaxy can launch Atorvastatin only in March 2010. The lawsuits seek to extend that ban by six more years. According to estimates, it is expected to generate $1 billion in the first six months after launch. A delayed launch will therefore be a big setback for the Indian drugmaker.

The US drugmaker filed the suits in the Delaware district court on Tuesday, alleging that Ranbaxy would infringe upon the process patents of both its drugs if it were to sell low-cost versions in the US market. A Ranbaxy spokesperson declined to comment. Ranbaxy, riding on many litigations, has been able to advance the launch date of its Lipitor version by 15 months to March 2010. The patent for Lipitor in the US expires in July 2011.

Incidentally, Pfizer’s latest offensive against Ranbaxy is on expected lines as Lipitor accounts for about a quarter of its total global sales. Caduet, which is a combine of Lipitor and hypertension drug Norvasc, had $568 million in sales in 2007. As drug discoveries dry up, innovator companies are desperately trying to fend off generic competition to protect existing patented drugs.

For Ranbaxy too, big bucks are riding on the drug’s launch. It is the first generic company to challenge the patent and if successful, will get six months exclusive marketing rights along with the innovator company. The Gurgaon-based company’s shares on the Bombay Stock Exchange (BSE) closed at Rs 448.10 on Wednesday, down by 0.76% from Tuesday’s close of Rs 451.55.

Industry experts are divided on the development’s impact. While some believe Pfizer’s move is boosted by its recent success in the Canadian court and it might be able to delay Ranbaxy’s generic launch, others think that the impact can’t be gauged before the court decision.

Last week, the Federal Court of Appeal of Canada had overruled a lower court order that will prevent Ranbaxy from getting regulatory nod to launch a Lipitor copy till July 2010. Ranbaxy is fighting patent battles with Pfizer to launch low-cost versions of Lipitor in over 15 countries. It was successful in invalidating Pfizer’s patent in Norway and the UK, but received an adverse ruling in Spain.

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Motorola Inc. bowed to pressure from investors Wednesday, announcing a plan to split its struggling cell phone business from other operations to form two separate publicly traded companies.

The widely expected deal comes as the suburban Chicago cell phone maker faces a second straight year of agitation from billionaire investor Carl Icahn, who has become increasingly frustrated with Motorola’s eroding phone sales.

Executives said the move will allow the two companies to better focus on their respective strengths and weaknesses, while accelerating the turnaround plan for the cell phone unit, which has seen its fortunes slip after trend-conscious customers lost interest in the Razr flip phone.

“The creation of the two independent publicly traded companies provides improved management focus and a capital structure that’s more tailored to the individual business needs,” said Chief Executive Greg Brown, who will remain at the helm of the split company’s non-cell phone unit. “And it will provide some improved alignment and agility and will help us going forward.”

Specifics of the deal haven’t been disclosed, but Motorola said its handset business will operate separately from another company offering its TV set-top boxes and modems and its computing and communications equipment.

Schaumburg-based Motorola said it anticipates the transaction will be tax-free, allowing shareholders to own stock in both of the new companies. If the deal is approved by regulators, the two units would be separated in 2009.

Officials haven’t said whether one company or both will retain the Motorola brand name or which company will distribute stock to existing shareholders.

Icahn called Wendesday’s announcement “much delayed and long overdue” and continued to push for the election of his four board members.

“As one of the largest Motorola stockholders, I continue to have concerns about the speed and manner in which a new management team is selected for the mobile devices business and the separation transaction is consummated,” he said in a statement.

“Time is of the essence, and decisive action is required to reposition the Mobile Devices business for success as an independent company,” Icahn said.

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Internet usage of women is more compared to men in US.  In 2007 the numbers are 97.8 million and 90.8 million for women and men respectively (Source: Marketer). It is also predicted that Internet usage will be more by women in the coming years.

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Internet usage of women is more compared to men in US.  In 2007 the numbers are 97.8 million and 90.8 million for women and men respectively (Source: Marketer). It is also predicted that Internet usage will be more by women in the coming years.

Prior-art of a invention includes-

*Patents-

**Issued before date of invention

**Issued more than one year before US filing date

*Publications

**Published before dtae of invention

**Published more than one year before the filing date of your application

**US filing date precedes date of invention

* Public knowledge, Public use,Public sale

** Public use or sale of product more than one year before the  date of your application

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Prior-art of a invention includes-

*Patents-

**Issued before date of invention

**Issued more than one year before US filing date

*Publications

**Published before dtae of invention

**Published more than one year before the filing date of your application

**US filing date precedes date of invention

* Public knowledge, Public use,Public sale

** Public use or sale of product more than one year before the  date of your application