Mining the patent system to improve research and its

commercialization

Malcolm SpenceSenior Coordinator, Intellectual Property, Science

& Technology Issues

malcolm.spence@crnm.org

• 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

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Make a patent search a compulsory part of every

science project’s literature survey

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To be patentable, research result needs to:

1. Be novel; AND

2. Include “an inventive step” (called by some “non-obviousness”); AND

3. Have “a technical effect” (called by some “industrial applicability”)

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Granted the legal right to excludeothers from using ‘invention’

providing that full disclosure of the invention is made.

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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

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The Anatomy of a PatentAdministrative 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

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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

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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)

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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

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WIPO

http://www.wipo.int/

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Version 2009

GuideObjectives; History; Reform;

Assistance in its use

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Sections

[Sub-sections]

Classes

Sub-classes

Groups

Sub-groups

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A HUMAN NECESSITIES

B PERFORMING OPERATIONS; TRANSPORTING

C CHEMISTRY; METALLURGY

D TEXTILES; PAPER

E FIXED CONSTRUCTIONS

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F MECHANICAL ENGINEERING; LIGHTING; HEATING; WEAPONS; BLASTING

G PHYSICS

H ELECTRICITY

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Section A – HUMAN NECESSITIES

• Agriculture

• Foodstuffs; Tobacco

• Personal or Domestic Articles

• Health; Amusement

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G01N33/483 • • Physical analysis of biological material

33/487 • • • of liquid biological material

33/49 • • • • blood

33/50 • • Chemical analysis of biological material e.g. blood

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H01S3/00 Lasers

3/09 • Processes or apparatus for excitation, e.g. pumping

3/091 • • by optical pumping

3/094 • • • by coherent light

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Section: H ELECTRICITY

Class: H01 BASIC ELECTRIC ELEMENTS

Subclass: H01F MAGNETS

Main group: H01F 1/00 Magnets or magnetic bodies characterised by the magnetic materials therefor

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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

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Group H01F 1/053 actually concerns

“magnets of inorganic materials characterisedby their coercivity, comprising hard magnetic alloys specifically containing rare earth metals”.

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http://www.wipo.int/wipogold/en/

http://www.epo.org/patents/patent-information/free.html

http://www.uspto.gov/patents/process/search/

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Thomson Reuters

MicroPatenthttp://www.micropatent.com/static/index.htm

Aureka

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• 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

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ipCapital GroupIntellectual property strategy advisors

http://www.ipcg.com/?file=Patent_Maps

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The Anatomy of a PatentAdministrative 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

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• 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

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Licensing Executives SocietyInternational

http://www.lesi.org/Article/Home.html

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Duration of Patent:

Twenty (20) years from Priority Date

Duration of Trademark:

Ten (10) years from Priority Date BUT renewable indefinitely

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Protection of New Plant Varieties UPOV

(Plant Breeders Rights)

Trees, vines and shrubs

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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)

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Please visit our Website:

http://www.crnm.org

Email:jamaica.office@crnm.org

barbados.office@crnm.org

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research and its commercialization