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PATENT COMPENDIUM

research

An important topic in commercial legal protection is the procurement of information. Early research can often avoid unnecessary investments or risks. However, every search will have certain gaps, some of which cannot be closed even with further research (misclassifications, publication that has not yet taken place, etc.). Research can be carried out online or offline, by yourself or with the help of service providers. The following notes can only provide initial information. For more information and research strategies, contact the relevant experts.

Prior Art Search

novelty research

Infringement research (“Freedom to Operate”)

Destruction research / opposition research

name research

patent monitoring

Prior Art Search

Stand der Technik
  • Aim: Overview research on the state of the art including assessment of the relevance of the results obtained; useful for R&D activities.

  • Special feature: not comprehensively necessary; Periods and markets and thus the scope of documents can be restricted; if necessary, additional specialist literature research

  • Type of results: relevant patents / utility models as bibliographic information or as full texts ("significant cross-section on the topic")

  • Example: In 1964, the Al Kuweit freighter, which sank in the port of Kuwait, was successfully lifted to the surface with 2,500 cubic meters of Styrofoam balls pumped into the holds. However, a patent for this idea failed because of Walt Disney, who created his comic book hero Donald Duck  already had a ship with ping-pong balls lifted in 1949.

novelty research

Neuheitsrecherche
  • Aims: Research whether an invention is new, i.e. above the known state of the art; as a preparatory safeguard for a patent application or to save development costs

  • Type of results: significant anti-novelty or very obvious material; usually small number of documents (if possible full texts, approx. 10)

  • Example: The Mechanism of Antikythera, is an ancient artifact of gears resembling clockwork, differential gears, 150 BC.  Chr.

Infringement research "Freedom to Operate"

Veletzungsrecherche
  • Aim: Analysis of whether placing a product on a specific market infringes the property rights applicable there. If so, research when, if any, a product may enter a particular market

  • Special features: Restriction of the research to markets, facts and time frames

  • Type of results: market-relevant documents, if possible as full texts and, if necessary, their legal status and family members

  • Example: Property rights granted in China

The case:  

In the spring of 2008, a Chinese court sentenced Schneider to a fine of 31 million euros for infringing patents on its own products. A Chinese patent pirate had registered the rights to the Schneider inventions for China.

Destruction research / opposition research

Vernichtungsrecherche
  • Objective: Identifying material against an intellectual property right in order to prove its nullity; Reasons are, among other things, infringement suits by others or property rights of others standing in the way of one's own developments

  • Special features: Global markets and the number of documents to be viewed are not restricted

  • Type of results: relevant previously published documents as full texts if possible; possibly "zero research", ie a lot of effort, but no relevant results

     

  • Example:




    Yasmin®: In 2005, Bayer filed a patent infringement lawsuit against Barr Pharmaceuticals, Inc. and Barr Laboratories, Inc. in US federal court. In it, Barr was accused of patent infringement over his intended generic US version of Bayer's oral contraceptive Yasmin®. In 2008, the US federal court invalidated Bayer's '531 patent for Yasmin®. The US Court of Appeals upheld this judgment in August 2009. In May 2010, the US Supreme Court dismissed Bayer's appeal. In 2009, Bayer generated global sales of €1.28 billion with the Yasmin product family

name research

Namensrecherche
  • Goal: Search for intellectual property rights of certain applicants or inventors with the following goals: Competitor analysis / company portfolio, search for experts or cooperation partners, search for specialists

  • Special features: Well-founded research usually requires thorough preparatory work/analysis in company databases

  • Type of results: Patents / utility models as bibliographic data or full texts of the inventors or applicants sought according to the limitation made, if applicable

Patentübrwachung

patent monitoring

  • Aim: Periodic monitoring of specialist areas, markets, competitors, legal status, citations

  • Type of results Patents / utility models as bibliographic information or full texts; weekly, monthly, quarterly

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