Identifying Inventions in the Public Domain : A Guide for Inventors and Entrepreneurs.

Format:

Book

Author/Creator:

Staff, World Intellectual Property Organization.

Language:

English

Subjects (All):

Public domain (Copyright law).

Physical Description:

1 online resource (116 pages)

Edition:

1st ed.

Place of Publication:

Geneva : World Intellectual Property Organization, 2020.

Summary:

This guide aims to assist researchers, inventors and entrepreneurs in determining whether specific inventions are protected by enforceable patents or may be in the public domain, by teaching a three-stage process for searching and analyzing published patent documents using the tools of freedom to operate determination. Designed for self-study, the guide has easy-to-follow training modules that take the reader through the process step by step, including with the help of useful checklists and other tools.

Contents:

Intro

Acknowledgments

Introduction to the guide

Module I Patents and the public domain

1. Introduction

2. Patent rights and the public domain for inventions

2.1 Patent rights and scope of coverage

2.2 Patent rights covering an invention

2.3 Public domain

2.4 A workable approach to questions of public domain: Searching and analyzing published patent documents

3. Freedom to operate (FTO) determination

3.1 Principles and practices of FTO determination: Three stages

3.2 A WHAT-WHERE-WHEN model for FTO determination

3.3 Possible outcomes of FTO determination

3.4 Goals and uses of FTO determination

3.5 FTO determinations may need to be updated or modified

4. Uncertainty, potential error, risks and limitations of FTO determination

5. Other uses of FTO tools: Identify subject matter that is not covered by patent rights and may provide possible alternatives

6. Conclusion

Module II Identifying technology information needs

2. Information to be gathered from the client

2.1 Technical information

2.2 Business information

3. Follow-on analysis and Summary Report

3.1 Summary Report Part A. Technical information

3.2 Summary Report Part B. Business information

3.3 Summary Report Part C. Additional analysis

4. Conclusion

Module III

2. Preparation for search: Deconstructing the invention

2.1 FTO search to find potential dominant patents

2.2 Expanded list of keywords and phrases to use in search queries

3. Patent classification symbols associated with the invention

3.1 Use screening tools to find potentially relevant classification symbols: Mapping keywords to patent classification symbols

3.2 Find IPC symbols in patent documents you have identified before beginning the search.

3.3 Find and refine IPC symbols through keyword searching

3.4 Rank and test IPC symbols for relevance

3.5 Use cross-references and co-assignment data to find related IPC symbols and add these to your search

3.6 Optional: Use patent classification information to find additional potential keywords

4. Select database(s) to search

5. Carrying out the FTO search: A hybrid strategy using keywords and patent classification symbols

5.1 Overview: Search claims and abstracts first

5.2 Tools for designing keyword search strings

5.3 Develop a search string: Query creation

5.4 Carry out initial search and initial review

5.5 Modifications

5.6 Searching "WHERE" and "WHEN" based on the client's plans for using the invention: Adding geographical limits and time frames to search

5.7 Searching non-text features using specialist databases or functions

5.8 FTO search as an iterative process: Review, refine, repeat… stop

5.9 Collect the final set of search results to use for preparing the Search Report

6. The Search Report

6.1 Format the search results

6.2 Search Report

Module IV FTO analysis: Reading claims and legal status information

2. Organization of FTO analysis

2.1 Choose the order in which you practice infringement analysis and legal status determination

2.2 Decide whether to sort and prioritize search results

3. Background to FTO analysis: Claims in patent documents

3.1 Claim structure

3.2 Types of claims: Classification by scope, function and/or subject matter

4. Infringement analysis: Claim construction and comparison of construed claims with the client's invention

4.1 Claim construction

4.2 Comparison of construed claims with the client's invention

4.3 Option: Carry out the comparison step before undertaking extensive claim construction.

4.4 Infringement analysis when claims include non-text features

5. Determining legal status

5.1 Patent term, expiration and abandonment

5.2 Other factors to consider in determining legal status

5.3 Sources of information for determining legal status

6. Making final determinations

6.1 Classify each claim

6.2 Classify each patent

7. The Final Report

7.1 Summary of the invention

7.2 Summary of FTO search

7.3 FTO analysis

7.4 Option for additional analysis

7.5 Conclusions

7.6 Risks and limitations

Module V Understanding limitations and risks associated with FTO determinations: Risk management and how to use results

2. Uncertainty associated with the premise of FTO determination

3. Limitations and risks associated with identifying information needs (Module II)

4. Limitations and risks associated with FTO searching (Module III)

4.1 Limitations of the search process

4.2 Limitations inherent in the data being searched or retrieved

5. Limitations and risks associated with FTO analysis and the Final Report (Module IV)

6. Going forward: Using the results in the Final Report

6.1 If FTO search and analysis of patent documents in a country of interest did not result in classifying any patent as a "patent of interest - in force" in that country

6.2 If FTO search and analysis of patent documents in a country of interest resulted in classifying at least one patent as a "patent of interest - in force" in that country

7. Conclusion

Annexes

Endnotes.

Notes:

Description based on publisher supplied metadata and other sources.

Other Format:

Print version: Staff, World Intellectual Property Organization Identifying Inventions in the Public Domain :

ISBN:

9789280530391

OCLC:

1348487357