Global Cooperation on New Patent Classification

Introduction

We are running through exciting times when profound changes are taking place in the patent regimes across the world through global cooperation. Much awaited reforms in the US Patent law have taken place recently with the passage of America Invents Act. Most of us are also aware of the ‘Patent Prosecution Highway (PPH)’ that is shaping up the prosecution process of inventions that end up subscribing to patent families across various patent offices with greater ease and speed. Patent classification is yet another arena that stands to witness significant amendments in the near future with intense cooperation between major patent blocks of the world in a very significant way. Some of the ongoing developments in this area are discussed here in this article, duly highlighting what is known as ‘Cooperative Patent Classification (CPC)’, the launch of which early next year is likely to be an epoch making event in the history of patents, especially with regard to searching the patents.

What is Patent Classification

A patent document, when published, either as an application or a granted patent, contains detailed bibliographic information broadly covering title, background, abstract, inventors, assignees, technical description, drawings, claims etc. This bibliographic data by itself is insufficient to throw any light on the technical field of the invention. In order to organize and index the technical nature and scope of invention as described in the patent specification, patent classification schemes are employed. Generally speaking, these schemes are constructed and maintained by and for patent examiners. When examining a patent application, the examiner needs to search a collection of previous patent documents to identify relevant prior-art and to establish the novelty of the patent under consideration. Essentially, therefore, the patent classification schemes are maintained and largely used by the patent granting authorities themselves for their internal use. Nevertheless, since patent data and information is now widely retrieved online for various different uses, anyone who is interested in searching patents requires to be abreast and adept is using patent classification codes. Patent Classification codes as ascribed to each patent are conspicuously discernible on the front page of patent document, i.e., US Class : 424/59, International Patent Class A61K8/00 and so on.

International Patent Classification (IPC) system developed and maintained by World Intellectual Property Organization (WIPO) came into existence since 1968. Today since by far all Patent Offices ascribe appropriate IPC codes to patents under examination in their jurisdiction, besides their own national classification codes, this has eased patent searching through IPC codes from cross-jurisdictional databases a great deal as compared to that in earlier times.

Major Patent Classification Schemes

Classifications, by definition, are groups of patent documents of similar subject matter. All major patent jurisdictions have their own unique patent classification schemes which took shape based on their own specific circumstances and needs. For this reason, there also is no direct relationship between one patent classification schemes with another. Some of the major patent classification systems include United States Patent Classification, International Patent Classification, European Patent Classification (ECLA), German Patent Classification System (DEKLA) and Japanese F-Index and F-terms. Depending on the source of patent databases, the user is therefore required to be well versed with the nuances of the underlying patent classification scheme to extract meaningful data. However, it is expected that this diversity of various classification system would soon vanish with emergence of Common Patent Classification scheme which most jurisdictions would eventually adopt. Till such time, however, it is necessary to know the specific features and characteristics of major patent classification schemes.

United States Patent Classification

The US Patent Classification system was launched in 1836; since then it has expanded many folds. Although it is applicable to US patent documents only, it is one of the most important national patent classification systems. Due to sheer size of the US patent data and its comprehensive coverage to wide range of technical fields with strong economic relevance, it is one of the most widely used system. Presently, the total number of classes in USPC is in excess of 450 and together with sub-classes well over 150,000 which keep growing with successive revision taken up periodically.

US classification system is stated to be a hybrid one based on “functional” aspects of the inventions as well as their “industrial application”. In the classification code, a class is regarded as the major component referring to one technology or subject area, where subclass is a minor component referring to processes, structural and functional features. Every class has a unique alphanumeric identifier, as do most subclasses.

The format of US class is as : CCC/SSS.sss, where the ‘Class’ is represented by the up to 3 digit and the subclass is a number up to 6 digits where the last three digits are decimal places. Subclasses are usually 1 to 3 digit numbers, and subclass numbers with more than one decimal place are rare. Usually, the class and subclass numbers are separated by a slash, although some.

The Index to all US Patent Classes can be accessed by clicking in here with their broad titles. It is worthwhile to browse through these titles to gauge what is beneath these titles. Clicking on the hyper-linked class codes leads to sub-classes at indent and sub-indent levels with their brief titles. It may be noted that there may be several classes for the broad title of the field, e.g., US classes 600, 602, 604 and 606 all refer to the field of ‘surgery’ but their sub-classes are quite different. It is, therefore, necessary to precisely understand which class carries the specific fields of interest.

Getting a knack of the relevant class / subclass that cover the field of interest is therefore very important to be able to retrieve relevant patents from US patent database. Looking through the index of classes and sub-classes of US patents may or may not be readily obvious to determine the relevant class / subclass for the technical field of interest being supported. For example, if one is keen to get all previous patents that deal with ‘wooden door frames’, one would be tempted to look through the Class 144 ‘Wood-working’ and its many sub-classes and can get easily lost without being able to find the relevant class. One easier and often smarter way of getting around such a problem is to look for a few previous patents through key-word search on ‘door frame’. And looking at the patents thus returned, one would find many patents being ascribed US Class 52 ‘Static structures (e.g., buildings). Now looking various sub-classes under the Class 52, one can find the sub-class 204.1 ‘Framing to receive door, door jamb, or window sash’ which seems quite relevant to the original objective of retrieving patents on ‘wooden door frames’. Having figured the relevant Class/Sub-class 52/204.1 as the most relevant, one can at once find as many as 145 patents that carry this US Class. It is also evident easily that another related Class/Sub-class 52/204.5 for ‘Window or window sash, sill, mullion, or glazing’ returns another batch of 121 patents.

The above example shows how one can make use of patent classes for retrieving relevant patents from the concerned database, in this case – US Patent database. Similar techniques can be employed for other patent databases but one needs to fully grasp the applicable patent classification scheme. It may be pointed out here that the diverse array of these patent classification schemes would soon converge to a single common patent classification system the world-over (Please refer to Cooperative Patent Classification described elsewhere in this article).

International Patent Classification

The origin of the International Patent Classification is the “International Classification” created under the ‘European Convention on the International Classification of Patents for Invention’ which was later adopted by the multilateral agreement, known as Strasbourg Agreement of 1971 and finally introduced by World Intellectual Property Organization (WIPO). All contracting states to Strasbourg Agreement and many others assign appropriate IPC codes on patent documents handles by them. Thus, IPC is currently adopted by most Patent jurisdictions.

Offices ascribe IPC codes besides their own codes on all patents granted by them. Another redeeming feature of IPC is that as the old number codes are changed as a result of expansion policy, all old patents residing in various online databases are also updated with new number codes, so that patent search based on a valid IPC code never goes dysfunctional.

The IPC system divides all fields of technology into hierarchical sets of sections, classes, subclasses and groups. Taking the classification down to sub-group level, the there are presently more than 70,000 classes representing various technical areas. The technical areas which may mean any technical matter, e.g., process, product, technique or apparatus are defined and suitably differentiated at the level of a class or a subclass in the International Patent Classification in a patent. It is an indispensable tool for industrial property offices world over, in conducting searches to establish the novelty of an invention, or to determine the state of the art in a particular area of technology. During examination of patent applications, the examiners classify all applications before they are published so that the classification information is available for future searches of novelty.

There are several patent classification schemes that are in use by different patent authorities but International Patent Classification (IPC) is by far the most popular and more universally applied. For example, UK Patent Office withheld using its own classification system (UKC) in favour of IPC since July 2007. More than 70 patent granting authorities are believed to be using the IPC codes.

The World Intellectual Property Organization (WIPO) maintains the International Patent Classification (IPC). The IPC is represented as a collection of alphanumeric codes. Each code refers to different types of technical information. Each patent document published is likely to have at least one IPC code applied to it. The European Patent Office (EPO) and other patent offices world over also use it as well as their own classification codes to classify their own patent documents, e.g., United States Patent and Trademark Office (USPTO) and the Japan Patent Office (JPO).

European Classification System (ECLA)

ECLA is another significant classification scheme which is maintained by the European Patent Office (EPO). ECLA codes are applied to European patent documents as well as to documents from other patent offices that are being included in their global database (EPO worldwide referred as Esp@cenet). This classification is essentially based on the structure of International Patent Classification system and can be regarded as an extension of the same duly modified to suit its own requirements. ECLA is fairly detailed at the sub-groups level and quite precise having twice as many entries totaling to more than 140000. In most cases, IPC and ECLA classes are identical but ECLA sub-groups extend beyond the IPC sub-groups. Patent searching through ECLA codes in the European worldwide Esp@cenet which covers patent documents from as many as 70 different patent offices of the world has, thus, become very popular in the recent times. ECLA codes are also used on patent applications under ‘Patent Cooperation Treaty (PCT)’.

Cooperative Patent Classification (CPC)

It is a paradox that in spite of a number of very well evolved schemes of patent classification in vogue, one is never sure to have found all relevant patents while searching from various jurisdictions belonging to any precise technical field. Ideally there should be one, highly detailed patent classification that everyone uses on published patent documents. This would make life simpler and patent searching for prior art or for seeing technology development trends. In fact, the launch of Cooperative Patent Classification (CPC) project is the first major step in that direction.

Back in October of 2010, the USPTO and EPO announced the launch of a joint program designed to harmonize their patent classification systems. This program, is aimed at creating a single classification system based on the International Patent Classification scheme administered by WIPO and to be used by both offices. Once operational, this new system should greatly improve patent searches and examinations across the two major patent jurisdictions. This would also eliminate the use of patent classification concordance between the two jurisdictions. It is interesting to note that this new system has been touted to benefit the innovators by way of facilitating the access of technical information contained in patent documents and the main objective of the program is stated to be “Improving patent searching”.

It is stated that the migration to CPC will be developed based in large part on the existing European Classification System (ECLA) and would comply with the standards of IPC administered by WIPO. As per the timeline / milestones set by the program, CPC is projected to be launched in January 2013, i.e., in about nine months from now. The other intermediate milestones as proposed are freezing of both ECLA (1 July 2012) and the USPC (1 November 2010). This timeline suggests that both USPC and ECLA would soon be things of the past replaced by what is known as CPC.

Among the deliverables, the program aims to produce CPC definition for each class for a technical field. Suitable changes in the format and coding is also proposed. For example, alpha-numeric ECLA code will be transformed to purely numeric codes in CPC, as exemplified in the following case:

IPC ECLA CPC
H01L21/027 H01L21/027 H01L21/027
H01L21/027B H01L21/02709
H01L21/027B2 H01L21/02718
H01L21/027B6 H01L21/027027
H01L21/027B6B H01L21/02736


Conclusion

There is no doubt that patent searching is going to be greatly simplified with the launch of CPC early next year. What is more, the new classification is expected to be adopted by major patent jurisdictions as soon as this is available since the program is being implemented under the aegis of IP5. As a next step, one can expect that most other patent jurisdictions, particularly those that have already embraced IPC would follow the suit to migrate to CPC and would find it perfectly feasible to do so. When this happens, global technology competitor analysis would become a matter of routine.

Reference

Cooperative Patent Classification

Patent Prosecution Highway

Introduction

With growing demand for patents manifested by the ever increasing globalization of world economy, there has been increasing pressures of harmonization of patent regimes through multi-lateral cooperation under TRIPS/WTO. Simultaneously, there have been quite a few notable changes with regard to patent prosecution processes e.g., pre-grant and post-grant opposition proceedings, publications of patent applications and granted patents in freely accessible patent databases and some newer ways of dealing with examination processes of patent applications.

Patent Prosecution Highway (PPH) is one of these newer mechanisms that have been adopted by some Patent Offices during the last decade, initially on trial basis and now increasingly on permanent basis. PPH is an agreement between two Patent Offices as a bilateral arrangement aimed at reducing the pendency period of patent prosecution and consequently the cost reduction of patenting in cases where the patent is desired to be secured in both the countries covered by such an arrangement.

Purpose and Modalities of PPH

The purpose of the PPH, as stated above, is to speed up the processing of patent applications filed in more than one country. Normally, when an applicant files patent applications for the same invention in more than one country either under the ‘Paris Convention’ or under the ‘Patent Cooperation Treaty’, the concerned patent offices will conduct searches and examine the patent applications independently without any regard to where else the application is filed and / or being considered.

In the PPH scheme, faster processing is achieved by the exchange and mutual use of work results between the two cooperating offices. This scheme is believed to enhance the efficiency of the patent examining process of one Patent Office by relying on examination work already done by the other cooperating office on a patent application without compromising on the quality of examination. As per the original provisions of PPH when it was launched between the USPTO and JPO, when claims were determined to be allowable in the Office of First Filing (OFF), a corresponding application with corresponding claims filed in the Office of Second Filing (OSF) could be fast-tracked for examination. Accordingly, the OSF could utilize the search and examination results of the OFF thereby avoiding duplication of work and expediting the examination process in the OSF.

However, the process of acquiring benefit of prior examination is not automatic but can be taken up on the request of the applicant. During the pilot stage, there were several restrictive conditions and only applicants fulfilling those conditions were able to take advantage of fast-tracking the examination of their patent applications. The positive experience, however, gained from the initial pilot programmes not only led to expanding the network of PPH programmes with inclusion of newer participating patent offices but the nature and scope of the PPH programmes have also since changed considerably with lot more flexibility in the hands of beneficiary patent applicants.

Cross-national patent applications

With growing internationalization of businesses, there is an increasing tendency of filing patents in foreign markets beyond the country of origin resulting into large number of patent families. With this, an enormous unavoidable duplication of work is also growing across the Patent Offices, if the examination of all the concerned offices proceeds from the scratch and no cognition is taken of the previous office actions elsewhere. The enormity of superfluous work can be gauged from the recent (2009 and 2010) data on flow of multiple patent applications between four Patent Offices of US, Europe Japan and Korea (China omitted) as shown in Fig 1.

It was the objective of the pilot programmes of PPH when launched to explore to what extent the search / examination results can be mutually used even though none of the partner offices are bound by the decisions of the respective other authority; the examination at either of the partner offices continue to be governed by their respective patent laws and rules. Many PPH started as pilot programmes have since already been turned into permanent arrangements suggesting the utility of these mechanisms.

Growing Networks of PPH Programmes

Since 2003, JPO and USPTO began exploring ways and means of exploiting the possible use of each other’s search results. This led to a pilot programme of PPH agreement between them initially for twelve months from July 3, 2006 to July 3, 2007 which was further extended to last a total of eighteen months ending on January 3, 2008. The programme was made permanent thereafter following a positive review from both sides.

Soon after the beginning the PPH pilot with JPO, USPTO launched a number of other similar programmes with its other allies to expand its network of PPH pilots even after the PPH with JPO was made permanent. Some of these further initiatives with their starting dates and hyperlinks to their official notifications are shown below.

  • IPAU (Australia) [April 14, 2008]
  • DKPO (Denmark) [November 2008]
  • HIPO (Hungary) [July, 2010]

Despite reservations expressed by many critics on these arrangements with apprehensions on the quality of patent examination to suffer due to dissimilar standards and skills of search on prior art in different offices, USPTO is clearly encouraged to have these on permanent basis to the extent feasible. An appreciable pendency reduction for US patent applications has been reported and seems to be one of the main reasons for the aggressive approach of USPTO. The average number of patent office actions before disposal of a case has sharply declined to 1.7 for PPH cases as against 2.7 for normal non-PPH cases. Further, an allowance rate of 93 percent was observed for PPH cases as against only 44 percent for non-PPH cases. It has also been observed from the USPTO end, that largest number of PPH requests come from applicants in the technology area directed to cellular and digital communications. Thus PPH arrangements are more desirable for fast moving technology areas.

Proliferating PPH Network

Many Patent Offices participating in PPH programmes with USPTO later launched similar pilot programmes amongst themselves on the model of initial PPH pilot between USPTO and JPO paving the way for promotion of international efforts to develop work sharing arrangements and reducing the cross-national duplication of examining the patent applications.

For example, a pilot PPH agreement between UKIPO and the JPO was launched on 2 July 2007 with the agreement being made permanent on 10 March 2010. Another pilot PPH agreement between UKIPO and the KIPO was launched on 5 October 2009. Likewise, JPO and the KIPO commenced their PPH programme in April 2007; the same between JPO and Chinese SIPO commenced as a pilot programme on 1 November 2011. UKIPO also launched similar pilot programmes with USA and Canada. A pilot PPH programme between German DMPA and Chinese, SIPO commenced on 23 January 2012 for duration of two years, ending on 22 January 2014. German, DMPA is also currently running similar pilot programmes with Canadian, CIPO, Korean, KIPO and Japanese, JPO. As on date, there are as many as 23 Patent Offices and countries participating in one or the other PPH programmes. A graphical representation of this PPH global network is shown in Figure 2.

How the PPH works

When the pilot programmes were launched, the applicants could request accelerated examination at the office of second filing (OSF) if the patent application was previously filed at the partner office and at least one claim had been determined to be allowable by that office. In this case, the work results of the respective offices would be exchanged and mutually used. Under the then PPH plan (also referred to as ‘basic PPH’), eligibility was limited to reuse of search and examination results from a partner office on the first-filed (i.e., priority) application in a patent family under ‘Paris Convention’. Later, PCT work product (written opinion, search, examination etc.) from several Patent Offices designated as International Search Agencies (ISAs) were also allowed as a basis to enter PPH at the USPTO.

Since May 25, 2010, the fee for the petition to make special under the PPH programmes has been withdrawn by USPTO. And since July 15, 2011 major revisions have been made to the eligibility criteria for requesting participation in the PPH programme. In doing so, it has been sought to make PPH programme user friendly and make it available to a greater number of applicants. Under the enhanced PPH framework, participation may be requested on the basis of results available on any patent family member from any office participating in this pilot, regardless of whether it was the office where the priority application was filed. The new pilot which would last until July 14, 2012 incorporates several other improvements also to the basic PPH framework, including a new definition of claim correspondence, which would hopefully make the system more flexible and user-friendly. The new plan, known as ‘PPH Mottainai Pilot Programme’ has been launched between USPTO, JPO, UK-IPO, CIPO, IPAU, NBPR, ROSPATENT and SPTO. Even with restrictive features in the erstwhile plans, the total number of requests for PPH has already crossed 8,000 globally, the major beneficiaries of which were mostly cross-national applications between US and Japan. It is, now with more user-friendly features, likely to be favoured more than previous versions by the patenting community.

The key provision of PPH Mottainai Programme is depicted graphically as Case 1 and Case 2 in Figure 3 and Figure 4 respectively.


It can be seen that the major shift in policy is moving from strictly ‘OFF/OSF’ basis to ‘OEE/OLE’ basis. This seems logical since ‘first filing’ does not always lead to first office action and quicker processing. An application having been prosecuted favourably once should lead to faster disposal for subsequent applications. Various provisions as provided in the PPH from time to time also brought out tendencies in patenting communities to consider the order of patenting in different countries. Many Patent Attorneys, for example, began advising to their clients in US under the erstwhile PPH to first file outside US where the backlog is considerably less, so that soon after the examination of their application and allowable claims, they could take advantage of PPH in US as ‘Office of Second Filing’. With the new provisions, it is now being suggested that it is advantageous to file first in a country like Australia where advantage of accelerated examination is available, so that based on the results of ‘Office of Earlier Examination (OEE)’, advantage in US can be taken under ‘Mottainai PPH’ as ‘Office of Later Examination’. Any how, USPTO as also all other allies are now keen to see the number of beneficiaries doubling very soon with the new provisions in Mottainai PPH .

Conclusion

With about two dozen countries and Patent Offices already under the fold of PPH by now, there is no doubt that the concept of PPH is going to stay with us and prosper further. Most countries having begun their game on trial basis in the pilot programmes seem keen to carry on the programme on permanent basis. While all the PPH programmes continue on bilateral basis as of now, it should not come as a surprise, if PPH is adopted eventually as multi-lateral arrangement like PCT, to which all signatory Patent Offices are obliged to accept.

References

  1. USPTO PPH Webpage
  2. JPO PPH Webpage
  3. Four Office Statistics Report 2010

The World of Mechanical Engineering Patents

Introduction

Mechanical Engineering is at the core of human ingenuity and creativity. Since the beginning of civilization, the man has learnt to put his intelligence in manipulating the laws of nature in a bid to conquer the nature itself by deploying various tools, appliances, equipment and machines. In simple terms, this branch of engineering deals with generation and application of heat together with mechanical power in producing myriads of products of our daily needs. All these operations require clever ways of material handling, mixing and modifications as well as the use of machines at one hand and designing processes and products for mass production of various end products (e.g., commercial, industrial and domestic products) or processes for mass consumption and utility (e.g., transportation) at the other.

It is inconceivable if we can live without any mechanical appliance today; in fact for any physical activity for leisure or work in the house, office or outdoor, we need them at every step. The range and capacity of these items is also fairly large and well categorized so that most of these are now virtually house hold items, e.g., grinder, mixer, washing machine, vacuum cleaner, sewing machine, watches, musical instruments, mechanical toys, garden tools, hand tools, gun and fire arms etc. Then there are other machines such as bicycle, motorbike, automobile, rail car and aircraft which also considerably influence our lifestyles. At the next level, there is a whole range of industrial machinery and heavy engineering items, such as cranes, construction and mining equipment, textile and paper machinery and those for other process industry as well as agricultural machinery. Besides enormity of the range, there also is another characteristic of inventions in this field. A mechanical engineering invention in the form of a simple and novel device or component for an important operation could come from a high school student or even from an illiterate villager (grassroots innovation!) as against a highly sophisticated self-actuating precision machine powered by sensors and robotics from the house of advanced engineering companies.

Engineering MNCs

Many engineering companies which grew with mechanical inventions are now well known globally competitive multi-national companies, each having large patent portfolios of their own. Ford Motor Company, Xerox Corporation and General Electric Company of USA are some of the examples of such MNCs who are reported to have built an inventory of thousands of patents to support their businesses. General Electric which has also set up a R&D Centre in India now for some years is reported to be keen on filing patents in large numbers in India too.

Historical Tools and Machinery Patents

Mechanical innovations have given us human comfort and flexibility of carrying out various operations and transportation since time immemorial; thus many mechanical engineering patents of earlier years are known as ‘legacy patents’ which include devices like typewriter, sewing machine, pistol, paddy thrasher etc. In fact, the invention of printing press by Gutenberg is regarded as the most remarkable invention of last millennium that is credited to have initiated ‘renaissance’ and changed the course of human history.

Project DATAMP

Directory of American Tools and Machinery Patents (DATAMP) is a database of old machines and tools patents currently having an inventory of 47 thousand plus (and growing further) patents collected largely from the databases of USPTO and augmented with several other patents from other databases, i.e., from Canada, Switzerland, Germany and UK. It is aimed at creating a clearing house on antique tool and wood working machine patents contributed by various enthusiasts and experts on voluntary basis and providing information about the history of these tools. The data collected from the old USPTO database (records of which are accessible only through patent number or from the classification number) is converted to a DATAMP format for easy searching and knowledge sharing. The information available on the website is freely available to anyone interested in it.

Vintage Patents

Patents between the year 1800 to 1900, most of which are from mechanical engineering branch and have interesting drawings in their descriptions have now become vintage patents and are getting popular as objects of art to be decorated in offices and living rooms. These patents are not just famous and unique such as that of President Abraham Lincoln but also belong to different categories, such as designs of automobiles of Ford, Dodge and General Motors etc., electric bulb, farm and dairy implements, tractors, sewing machines. Machine guns, revolvers, kitchenware, musical instruments, steam engines, locomotives and railway instruments and equipments such as signals and switches, sports equipment, blacksmith tools, carpentry tools, hand tools, firefighting equipment, heavy construction equipment, office machines, printing machinery, automobiles, bicycles, motorcycles, trains etc.

A website ‘Vintage Internet Patents‘ is an online repository of about 450 such vintageFord Tractor 1919patents set in different categories of trade and professions mentioned above. The website offers a service of reproduction of patent drawings of selected patents on 10″x13″ parchement paper duly framed as an art object as described at ‘Patent Art‘. A typical picture of a vinatge patent showing Ford Tractor of 1919 taken from the website is shown here. A complete patent document is also downloadable for reference along with each patent drawing to be stored in pocket on the backside of the frame. Similar patent drawings are also available from a few other internet marketing websites, namely e-bay etc.

Advances in Mechanical Engineering

While the core of mechanical engineering discipline deals with application of scientific principles for design and production of tools and systems for operations and transportation using mechanical and thermal energy that call for the basic understanding of concepts like structural analysis, material science, thermodynamics, kinematics and mechanics, the present day study of mechanical engineering is more and more interdisciplinary. Advanced areas of micro-systems, control engineering, mechatronics nanotechnology and biotechnology are now an integral part of the mechanical systems being developed for applications in variety of industries, e.g., energy, environmental engineering, manufacturing & processing, construction & building, bioengineering, aerospace & defense, transportation, automotive etc.

It has become important to develop appropriate academic understanding of newer concepts and principles in line with the new inventions emerging from such cross-disciplinary research. In line with this requirement, Bentham Science Publishers Ltd. has started bringing out annual review of different aspects from annotated collection of ‘Recent Patents on Mechanical Engineering’ (ISSN: 1874-477X) since 2008. These developments are reviewed by highly accomplished scholars from academics and cover the topics like, ‘Absorption Cooling Systems’, ‘Shape Memory Alloys’, ‘Fuel Cells’ etc.

Searching Mechanical Engineering Patents

In view of wide scope of application of mechanical engineering concepts in diverse industries, the searcher should preferably have a background in the subject and a fair understanding of the principles of working of devices for which patents are being searched. It pays to update the general knowledge of the subject by going through the relevant articles available on the internet at appropriate sites such as ‘Wikipedia’ and ‘How stuffs work’. It may also be borne in mind whether the interest lies in looking for utility patents on inventions embodying technological advances or different designs and configurations of standard devices having aesthetic appeal. In the latter case, one should look for pictures under suitable design classes in the design databases which are generally published separately from the databases of utility patents by different patent offices. The discussion on ‘patent searching’ herein after is restricted to searching mechanical engineering utility patents that describe substantial technical improvements over the prior art and are usually accompanied by drawings.

Since most mechanical engineering patents provide a combination of text and drawings which must be read simultaneously to get to understand them, it is essential that their search studies be accomplished on databases and systems that provide both text and picture capabilities. Both USPTO and European ‘espacenet’ do provide these facilities as also many other systems and free patent databases on the internet. It has been observed that a facility to flip over pictures and text while going through the patent description greatly helps in understanding the mechanical engineering patents. This facility is known to be available with some commercial software for patent search.

A search tool ‘EAST (Examiner Automated Search Tool)’ used by Patent Examiners of USPTO is widely praised for its ability to flip through document images at an extremely rapid rate. This is a highly valued attribute by searchers of mechanical patented inventions. The access to EAST is stated to be available for use by general public free of cost in a Public Search Room at the USPTO headquarters in Alexandria, Virginia, USA.

Classification Search

Patent search is usually accomplished through a twin strategy of searching through ‘key words’ as well as ‘classification codes’ as applicable to the patent databases being searched. US Patent Classification codes, USPC are applicable to US patents, as European classification codes, ECLA are applicable to European patents and the F-terms applicable to Japanese patents. International Patent Classification (IPC) codes which are managed by WIPO are now widely applied to patents by various patent offices and hence IPCs can also be used for searching patents of interest. To be able to search the patents through classification codes, one needs to be familiar with the classification systems to extract meaningful patents using the class or sub-class of interest from appropriate database.

USPTO is known to have some 248 major classes for mechanical patents; each class is given a class definition and the inventions are further categorized into different sub-classes. One needs to learn precisely about these classes to search patents indexed by the identified class; each patent may also be classified under more than one class or sub-class. USPTO classification is based on the claimed inventions and has a large historical baggage and therefore prior familiarity with USPC classes and sub-classes greatly helps in searching exercises.

European classification, ECLA which is based in ‘International Patent Classification (IPC)’ and more elaborate than IP,C is a hierarchical subject specific classification. In ECLA/IPC, Section-F is entirely devoted to mechanical engineering and there are as many as a dozen and half classes under it as shown in the Table below. The titles of each class in the Table are active links and clicking those would lead to patent collection under that class. Patent collection under each class may, however, run into a number exceeding 100,000 patents and one would need to know and use precise sub-classes, groups and sub-groups under each class to harvest a meaningful number in a well-defined narrow field.

Mechanical Engineering; Lighting; Heating; Weapons; Blasting Engines or Pumps F
Machines or Engines in general F01
Combustion Engines F02
Machines or Engines for Liquids F03
Positive Displacement Machines for Liquids; Pumps for Liquids or Elastic Fluids F04
Fluid-Pressure Actuators; Hydraulics or Pneumatics in general F15
Engineering Elements and Units; General Measures for Producing and Maintaining Effective Functioning of Machines or Installations; Thermal Insulation in general F16
Storing of Distributing Gases or Liquids F17
Lighting (other than Electric Aspects) F21
Steam Generation F22
Combustion Apparatus; Combustion Processes F23
Heating; Ranges; Ventilating F24
Refrigeration or Cooling F25
Drying F26
Furnaces; Kilns; Ovens; Retorts F27
Heat Exchange in general F28
Weapons F41
Ammunition; Blasting F42

It may be noted that it is common to find mechanical patents frequently in other sections beyond the main classes of Section F in ECLA/IPC. For example, ‘Machines for Finishing Brushes’ bearing the code A46D9 in Section A fetches more than thousand patents through this code. Therefore, it is important to carefully check the entire classification scheme to avoid missing important patents.

Japanese F-terms

Machine translated abstracts of Japanese patents in English are now becoming freely available online at Industrial Property Digital Library. The classification and search system adopted by the Japanese is particularly well suited for searching mechanical engineering patents and therefore it is described here in some detail.

The search system comprising of F-terms and F-Index (FI) was developed by Japanese Patent Office and is used by examiners in the JPO who accord appropriate F-terms, together with IPC codes, to each patent document published by the JPO. This classification system consists of themes and associated terms differentiated from each other but related to the overall theme in a tree like fashion. Each theme has a number of viewpoints which in turn describe different aspects denoted by what is referred as F-terms. Thus each theme is eventually a matrix of viewpoints and the F-terms. Each document is assiduously classified by the Patent Examiner repeatedly for each viewpoint in the respective theme with suitable F-terms along with IPC codes.

For searching of relevant documents on focused themes, thus, it is essential to clearly understand the mechanics of identifying relevant F-terms corresponding to the main sub-groups in ECLA/IPC. To illustrate, let us consider the main group ‘F02B1/00′ for ‘Engines with fuel-air mixture compression’ in ECLA/IPC classification system. The corresponding F-Index for ‘F02B1/00′ of ECLA is ’3G023′ at IPDL. The theme of ’3G023′is further differentiated by as many as seven view points: AA – Purpose or Effect, AB – Ignition Method, AC – Fuel Supply Method, AD – Combustion Chamber Construction, AE – Material or Surface Treatment, AF – Engine type and AG – Special Combustion Method or the Like. Each of these viewpoints has several F-terms and two of the F-terms of viewpoint AD are:

AD02 – Combustion chambers formed mainly in pistons, and
AD03 – Combustion chambers formed mainly in cylinder heads

Thus, if the interest lies, for example, in combustion chambers formed mainly in pistons and not in cylinder heads, one needs to search through the F-term 3G023 AD02 only leaving out all other superfluous collection on internal combustion engines.

The significance of searching patents through F-terms lies in the fact that most assignees of globally competitive inventions file for patents in Japan besides USA and Europe. It is helpful, therefore, to search patents in tightly focused areas through F-terms and identify key patents and then expand the search with their ECLA/IPC classifications in their families.

Conclusion

The field of mechanical engineering is not only overwhelming in a wide range of industry but is expanding in all dimensions of research with a fair amount of cross disciplinary developments. The global inventory of patents in mechanical engineering is burgeoning and is getting fairly complex with regard to classification and search. Just as carrying out advanced research in mechanical engineering is getting more challenging with newer areas such as CNC machines, robotics, MEMS etc., the search of patents also is getting equally challenging and requires appropriate background and skills of the searchers.

References

New Face of Innovation

Introduction

Creativity and innovation have now come to be regarded as universal natural resources at par with or even more valuable than the conventional factors of production for economic growth. These intellectual assets are invariably referred to as ‘intangible assets’ to distinguish them from physical assets referred to as ‘tangible assets’.

Intellectual Property Systems all over the world have become all too important in economic growth and international trade following reforms and harmonization of intellectual property laws in most of today’s globalised world. The ownership of intellectual property (IP) rights on ‘intangible assets’ has become central to the development and growth of companies both in high-income as well as low and medium income countries.

Between 1982 and 2001, the proportion of intangible assets in the total assets in many companies in the United States, on an average, has jumped from 38% to as high as 70%. Even in Europe, the proportion of intangible assets is reported to have escalated from 30% in 1990 to more than 40% as of now.

Innovation by businesses is achieved in many ways, with formal research and development (R&D) for ‘breakthrough innovations’ taking the central stage. A broad view of innovation includes incremental product and process improvements that helps ideas to reach the commercialization stage. IP ownership helps achieve these objectives; the unprecedented growth of patent filing all over the world is a testimony to this view. With empirical view of the relationship between IP assets and the economic growth, we seem to have arrived at a stage where an analytical insight from an Economist’s point of view can now be obtained based on the global trends of acquiring IP assets coupled with other surveys.

On November 14, 2011, the World Intellectual Property Organization (WIPO) issued a report, entitled “World Intellectual Property Report 2011 – The Changing Face of Innovation” which precisely deals with the subject. This essay essentially attempts to highlight the findings from this first ever report on this subject from WIPO.

Growing Global Inventory and Significance of IP

  1. The demand for patents has risen from 800,000 applications worldwide in the early 1980s to 1.8 million 2009. This growth was spurred initially by Japan in 1980s, joined by the United States (US) and Europe. In 1990s, the Republic of Korea drove this growth which has been followed up more recently by China.
  2. The demand for Trademark, similarly, has increased from just below one million registrations per year in the mid-1980s to 3.2 million trademark registrations by 2009. Design also seems to be increasingly getting due importance in facilitating the journey of technology or an invention from development through to the marketplace. The latest estimates for the UK suggest 30 per cent of all intangible investments going for design registrations, which is about five times the spending on R&D. The most popular industrial design classes as reported are packages for the transport of goods and food products; clocks and watches; furniture, house wares and electrical appliances; vehicles and architectural structures; fashion and textile designs; and leisure goods. New classes for graphic logos are also increasingly filed in design registrations. The number of industrial design applications filed worldwide in 2009 stood at approximately 640,000.
  3. IP is being treated today more as a central business asset that is managed strategically and valued and leveraged with a view to generating returns through active licensing. Patents in particular are being increasingly used as collateral for bank loans and as investment assets by financial institutions. Patents have become all too important for knowledge based start-ups. Beyond patents, new business models increasingly tend to rely on protection of other forms of IP also, namely, trademarks, designs and copyright.

The Changing Nature of Innovation
and Intellectual Property

  1.  The geography of innovation is changing as evidenced by the trends in last two decades.
  • Global R&D expenditure almost doubled in real terms from 1993 to 2009. Since this period also saw  marked growth of the global economy, the share of global gross domestic product (GDP) devoted to R&D increased at a more modest rate – from 1.7 per cent in 1993 to 1.9 per cent in 2009.
    •  Most R&D spending still takes place in high-income countries – around 70 per cent of the world total. They spend around 2.5 per cent of their GDP on R&D – more than double the rate of middle-income economies.
    • Low- and middle-income economies increased their share of global R&D expenditure by 13 per cent between 1993 and 2009. China accounts for most of this increase – more than 10 percentage points – propelling China to the world’s second largest R&D spender.

         2.   The process of innovation is no longer dependent entirely on radical breakthroughs.

  • Intangible assets other than R&D are now attracting significant investments, such as corporate reputation and advertising, organizational competence, training and know-how, new business models, software and IP (copyright, patents, trademarks and other IP forms).
    • Investment in intangible assets in United States is estimated to be of the order of US$ 1.2 trillion per year for the period 2000-2003 in comparison to that on scientific R&D that makes up about US$ 230 b.
    • Similar data for Sweden and Greece show investment in intangibles at 9.1 and 2 per cent of GDP respectively which are considerably higher than that on scientific R&D estimated to be 2.5 and 0.1 per cent of GDP respectively.
  1. Despite difficulties in measuring authentic data on payments for royalties and license fee (RLF), there are clear signals that international trade in knowledge, in particular patents in disembodied form has significantly increased in recent decades.
  • In nominal terms, international RLF receipts for IP increased from USD 2.8 billion in 1970 to USD 27 billion in 1990, and to approximately USD 180 billion in 2009. Over the period 1990-2009, RLF receipts and payments in the world economy grew at a fast rate – 9.9 percent per annum.
  • In the US, the only country with available data, industrial processes and computer software account for over 70 percent of all RLF.
  • In 1990, 62 countries made RLF payments and, by 2007, this number increased to 147 countries. Similarly, in 1990 only 43 countries received RLF payments but, by 2007, this number increased to 143 countries. In the recent decade, the BRICS economies, Ireland, the Republic of Korea, and former Eastern European nations gained in economic importance.
  • RLF contribution in the total revenues, nevertheless, remains small and RLF on IP particularly is beginning to grow from a low baseline.
  • In most countries, less than ten per cent of patents are subject to licensing outside the company even though there has been steady growth in the number of companies licensing out their patents.
  • IP services intermediaries beyond traditional patent agents and attorneys have emerged in recent times and are growing further. These cover IP clearinghouses, exchanges, auctions and brokerages, model agreements, IP management support, IP trading, IP portfolio building to licensing, defensive patent aggregation and others.

 

The Economics of Intellectual Property
- Old Insights and New Evidence

  1. Patenting activity has been seen to grow fast for so-called complex technologies, e.g., those that consist of numerous separately patentable inventions with possibly wide spread patent ownership in comparison to simple and discrete technologies. Complex technologies envelop – ICTs in general and, in particular, tele- communications, software, audiovisual technology, optics and, more recently, smart phones and tablet computers.
  2. Such portfolios of patents seem to strengthen firms’ bargaining position vis-à-vis their competitors. Moreover, a firm with a basket of related patents in a crowded technology space is better able to preempt litigation from potential competitors and effectively deal with cross-licensing for commercializing new technologies.
  3. Over the last 15 years, most patent offices have seen unprecedented growth in patent applications with the result of mounting backlog of unexamined applications. As per WIPO estimate, the number of unprocessed applications worldwide stood at 5.17 million in 2010. JPO, USPTO and EPO are among the offices with largest backlogs; many low and medium income countries including India is also known to have substantial piles of unexamined applications.
  4. In addition to backlogs, many offices have also seen extended patent pendency times. For example, between 1996 and 2007, average pendency times increased from 21.5 to 32 months at the USPTO and from 24.4 to 45.3 months at the EPO.
  5. To ease the backlog problems, some Patent Offices have taken recourse to outsourcing the examination of patent applications; this modus operandi is finding ready acceptability in other offices as well. A new crowd-sourcing initiative launched in 2007 – called Peer-to-Patent – makes use of social networking software to assist patent offices in their examination work wherein members of open source community help identify relevant prior-art. Given the success of the pilot program in the US, patent offices in Australia, Japan, the Republic of Korea and the United Kingdom are examining the feasibility of a similar programme in their respective offices.

Balancing Collaboration and Competition

  1. Research Collaboration between firms and institutions that result into IP are more widespread; however, precise data to gauge the growth rate and trend is somewhat challenging to collect. Of various fields, biotechnology and chemicals exhibit frequent collaboration. Patent data from USPTO during the years 1989-1998 shows that co-patenting was most frequent in the chemical, ICT and instrumentation industries.
  2. It has been shown that collaboration for innovation can happen in ‘Open Source’ mode in certain fields where large talent-pool through voluntary contribution is more effective than the IP exclusivity for market dominance. It involves developers as individuals and institutions having complimentary skills and competence who willingly share their resources for a lofty objective of technology development which is then distributed at no or low direct cost.
  3. Open source projects, particularly in computer software field have increased rapidly: a well known website SourceForge.net acting as a platform for open source software developers, grew from a handful of projects ten years ago to over 250,000 today. A few open source platforms have also emerged for technology development in the tropical medicines field largely participated by university researchers and public funded institutions.
  4. A new wave of collaboration as ‘Patent Pool’ has emerged in last two decades essentially with a view to commercialize patents where patent rights are distributed over a fragmented base of patent holders which can best be exploited as a package. Patent pools have gained popularity in ICT field followed by the biotechnology. Patent pools are being employed for philanthropic purposes also in some cases, e.g., the Public Intellectual Property Resource for Agriculture (PIPRA) patent pool for genetically modified rice brings together over 30 different IP owners to make patented technologies available to less developed economies free of charge.
  5. Research Collaboration between firms and institutions that result into IP are more widespread; however, precise data to gauge the growth rate and trend is somewhat challenging to collect. Of various fields, biotechnology and chemicals exhibit frequent collaboration. Patent data from USPTO during the years 1989-1998 shows that co-patenting was most frequent in the chemical, ICT and instrumentation industries.

Role of Intellectual Property in Harnessing
Public Research for Innovation

  1. Research Collaboration between firms and institutions that result into IP are more widespread; however, precise data to gauge the growth rate and trend is somewhat challenging to collect. Of various fields, biotechnology and chemicals exhibit frequent collaboration. Patent data from USPTO during the years 1989-1998 shows that co-patenting was most frequent in the chemical, ICT and instrumentation industries.
  2. Research Collaboration between firms and institutions that result into IP are more widespread; however, precise data to gauge the growth rate and trend is somewhat challenging to collect. Of various fields, biotechnology and chemicals exhibit frequent collaboration. Patent data from USPTO during the years 1989-1998 shows that co-patenting was most frequent in the chemical, ICT and instrumentation industries.

Conclusion

The face of innovation is changing as also the geography and is likely to evolve further with new opportunities and challenges in the globalized world. The growing demand for innovation is continuously influencing the IP systems. New approaches and IP-based incentives are further shaping the scope and prospects of commercialization of public and private research. There is a need to develop further insights on the inter-relationship between ‘intellectual property’ and ‘innovation’ to develop appropriate public policies.

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World Intellectual Property Report :
The Changing Face of Innovation – 2011

Cluster-Based Patent Retrieval for Scientists and Technologists

Introduction

Patents are a rich resource of scientific knowledge as each invention patented or desired to be patented embodies several technological concepts besides the key concept on which it is often based. Like in scientific literature, there is a practice of citing previous patents and other sources of information while describing the invention in a patent application.

Retrieval of past relevant patents irrespective of having been cited or not, to a target technology is a sine qua non in the filing and prosecution of patent applications. The main purpose of retrieving patent documents is to validate the genuineness of the technology in a patent application which is assiduously followed by large companies in the corporate sector maintaining sizable patent portfolios and also by their Patent Agents and Patent Attorneys. Competitive intelligence, to keep track on the competitor’s activities is usually their main objective for continuously conducting the patent search. Patent Examiners in patent offices around the world also conduct significant patent search to establish the novelty and check any infringement in the context of invalidity search (i.e., finding prior patents that contain some conflicting claims) which is often critical for a newly applied patent applications.

For academic researchers, usually the purpose of patent search is to get an insight and knowledge for new leads in research. Most often these are conducted based on key-word searches in free patent databases and assiduously building a set of patents by hand-picking from a maze of collection thus obtained. These are fairly painstaking exercises and fail to inspire many scientists to conduct patent searches of their interests on regular basis. As we shall see in the following sections, patent retrieval, especially the emerging mode of cluster-based patent search is a potentially new tool for gathering relevant existing knowledge in the hands of technology developers.

On-line Search of Patents

With growing harmonization of patent laws of various countries, the taxonomy of patent documents and the respective fields of their content have also now become quite comparable with adoption of ‘Internationally agreed Numbers for the Identification of (bibliographic) Data (INID)’ codes since 1970s to identify bibliographic data on the front page of patent documents. These INID codes lend the patent documents collected from different sources to be collated in a common database for their bibliographic analysis on global basis. As on date, there are approximately 60 INIDs representing distinct bibliographic data. These are widely used on the first page of patent documents or in Patent Gazettes.

Some key INIDs pertain to patent classification codes that refer to the nature of technical information possessed by the patent documents. Various classification systems are in vogue, mostly evolved by different countries as per their own convenience and requirement. International Patent Classification (IPC) has been introduced by World Intellectual Property Organization (WIPO) which is regularly being updated from time to time. Fortunately, IPC is universally accepted and most Patent Offices ascribe IPC codes besides their own codes on all patents granted by them. Another redeeming feature of IPC is that as the old number codes are changed as a result of expansion policy, all old patents residing in various online databases are also updated with new number codes, so that patent search based on a valid IPC code never goes dysfunctional.

The IPC system divides all fields of technology into hierarchical sets of sections, classes, subclasses and groups. The technical areas which may mean any technical matter, e.g., process, product, technique or apparatus are defined and suitably differentiated at the level of a class or a subclass in the International Patent Classification in a patent. As of now the total number of codes as per this classification runs over 70,000. It is an indispensable tool for industrial property offices world over, in conducting searches to establish the novelty of an invention, or to determine the state of the art in a particular area of technology.

There are several patent classification schemes that are in use by different patent authorities but International Patent Classification (IPC) is by far the most popular and more universally applied. For example, UK Patent Office withheld using its own classification system (UKC) in favour of IPC since July 2007. More than 70 patent granting authorities are believed to be using the IPC codes and this number is growing further. Moreover, there are now several comprehensive patent databases online offering free search facility for patent data from a large number of countries. For example, ‘esp@cenet’, a worldwide patent database of European Patent Office is one source that provides free search facility from its database pooling patent documents from more than 90 countries.

It presupposes that a scientist or technologist needs to fully understand the IPC system or more precisely know the IPC codes referring to the areas of his / her interest to optimally benefit from such a comprehensive source for search based on these codes and build a meaningful patent inventory.

Cluster Based Patent Retrieval & Visualisation

Searches based on IPC codes are essentially cluster based on ‘topic’ and not on ‘search terms’, by the very nature of IPC codes. During the prosecution stage, each document is hand-assigned to its appropriate IPC codes by the Patent Examiners resulting in the document being part of several pre-defined clusters. Many automated software for patent searches and mapping have been based on IPC clusters and further segmentation and clustering based on specific terms before visualization of resulting trends and profiles from the refined data. Many commercial mapping and analytical software vendors maintain their own databases of processed patents which are intuitively categorized and classified into different scientific fields as per their own scheme instead of using IPC clusters of raw patents. Clearly, such a facility provides a significant value-addition but at a cost which may be out of reach for many scientists.

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Prior IP: Patent Cluster Visualization

Prior IP (www.prior-ip.com) is one of the latest to join the band wagon of patent search engines on the internet with a novel concept of clustering based on patent citations and visually display technology areas with patent data. The methodology is not clearly explained in the available information though, the site claims to have evolved over 50,000 clusters and a patent or application could belong to more than one cluster. Three distinct modes of visualizations of related clusters are provided which include cluster maps, cluster landscapes and cluster neighborhoods.

The very first step a user is supposed to take is to search relevant term(s) in the box(es) for a ‘technology’, ‘organization, i.e., assignee or applicant’, ‘inventor’, ‘document number’, etc. which returns a list of relevancy ranked patent documents (granted and applications) available within its database. Clicking on a listed patent or application displays the selected patent document in a familiar format with text of the document along with a thumbnail of the front page. Alongside the list of patents / applications, a small window with a thumbnail of network of clusters is provided on the right side indicating a label, “Visualize IP Search Results”. Clicking on the this thumbnail opens up a ‘Cluster Landscape’ with a series of ‘Cluster Maps’ bearing a set of specific top terms for each cluster and indicating number of patents and applications in that cluster. How these clusters bring forth relevant patents and applications through the maze of patent clusters and allow users to hand pick most relevant for them by surfing through visually friendly and spatially orientated landscape of familiar technological areas can be demonstrated through an example of actual search.

Since contamination of soil environment is a hot topic and variety of technologies based on different approaches have been developed and still new technologies are being developed in many countries, we chose a term ‘soil contamination’ for our initial search that resulted a simple list of 1529 patents and applications. As anticipated, a thumbnail for “Visualize IP Search Results” appears on the right side. Running through the list, we can see that there are patents from various countries, namely USA, Germany, Taiwan, Korea, Japan etc. Clicking on the document titles, we access bibliographic data with a facsimile of the first page of the document. Also provided are the links to reach the source database for full text of the document and also a link for downloading a pdf version of it. The running list is provided along with a ‘relevancy score’ presumably based on the intensity of search term within the document. Please note we commissioned a simple search with the given terms and it is also possible to search through various sections of the document, viz, title, abstract, description etc. and hence we can get a different number and scores of returned documents.

Most interesting part of this search exercise, however, is cluster maps instead of the running list. Thus, when we click on “Visualize IP Search Results”, we are presented with a cluster landscape with a network of a series of thumbnail view of the cluster maps. In this case, we get as many as 43 cluster maps (even though elsewhere it indicates 114 clusters!). All these cluster maps have a unique names (with top terms in the parentheses) referring to a specific area of research and technology. Many of the cluster names may appear remotely connected with key area of interest, but some are definitely too close. Table 1 below shows some of these cluster titles, e.g, i) ddt contaminated soil, ii) removing soil contaminants, iii) remediating contaminated soil and so on.

The patents and applications from any of the clusters can be viewed by clicking on the provided links. Similarly, by clicking on the cluster image or link as provided brings forth the spread of the network of clusters. Thus clicking on the link for Cluster 3 in Table 1 above, we can see the desired cluster map as in Figure1.

Once again, all cluster titles may not appear to be quite relevant but some could attract the attention of the user. Some of the other clusters as accessed at a successive stage through previous cluster are shown in the Table 1. It may be noted that all the successive clusters are not sub-group of the previous cluster but all are independent clusters networked with each other through a pre-determined relationship (citations!). This can be understood from the fact that the number of patents / applications in these clusters are highly variable and bear no hierarchical relationships of any kind. The details of patents and applications in any of these clusters can be seen in pop-up windows by clicking on the relevant link. It is interesting to note that a separate link is also provided to access details of some patents / applications which do not form the part of the cluster for some reason.

Pop up of cluster details appears in an interactive template as shown in Figure 2 and is quite informative. In this figure, details of the cluster – remediating contaminated soil (water, removing, verfahren) which we reached through Cluster 3 shown in Table 1 above are shown. This has under its fold 1780 patents and 1689 applications. Besides, patent time-line which essentially shows the growth profile of patents applied / granted on a time scale for the patents covered in the cluster, It shows in separate windows, top assignees, top inventors and also top patents and top applications. It is understood that while top patents and top applications are both with reference to the citations the patents / applications listed in the relevant cluster, the top assignees and top inventors should be based on their absolute numbers in each cluster. Attempts to view top inventors, however, did not succeed in returning any results. Nonetheless, the window for top assignees presents very interesting information. The active links for the top assignees point to a comprehensive profile of the assignee with details of patents, applications, technologies and the clusters to which it can be attributed. It also provides the assignee’s most recent patents, applications and licensable technologies which are not just restricted to the field of the cluster. Thus one can easily comprehend the overall technological strength and back up of the assignee beyond one’s narrow area of interest.

Conclusion

While experts in information science are still vigorously trying to develop various algorithms for cluster-based patent search, there already is on the horizon a very exciting tool albeit with a few bugs yet. The cluster-based patent search facility as offered by Prior IP is certainly very useful for everyone and above all for scientists and technologist who are likely to patronize its maximum use. Scientists with keen interest for building a patent inventory in their narrow subject of specialization should feel extremely at home searching patents through the available clusters without bothering to learn the basics of patent systems. The added beauty of the facility is that the user can download all patents of interest on his / her desk-top in a csv format to build a personal inventory of relevant patents in Excel.

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PRIOR-IP

America Invents

Introduction

On Friday 16 September 2011, President Barrack Obama ratified a bill that was passed earlier by the House of Representatives and the Senate that is now a law in America. In the signing ceremony that took
place in the historical Thomas Jefferson High School for Science and Technology in Alexandria, Va., President called it a jump-start for the economy and a boon for jobs representing a major overhaul of the country’s patent system since 1952.

The new law formally known as ‘Leahy-Smith America Invents Act (HR 1492′1 named after the senators, Patrick Leahy and Lamar Smith who authored the bill, contains numerous provisions that, although not significantly altering current patent law, provide positive steps towards creating a more progressive body of patent law. Among other things, America Invents Act will harmonize America’s patent system in line with patent regimes of rest of the world, under whose pressures the amendments have ostensibly been brought forward. The new Act, however, also makes provisions to liquidate the mounting back-log of 700,000 patent applications that have not been opened yet. “Somewhere in that stack of applications could be the next technological breakthrough” quipped the President in his inaugural speech at the signing ceremony. The new legislation found broad support from industry and technology heavyweights – including Microsoft, Apple, Google, Facebook etc. whose representatives and the CEOs graced the signing of the bill.

Key Provisions

1. First inventor to file

By far the most sweeping change in the new Act is the transition from a “first to invent” system to a modified “first to file” system, which is set to take effect eighteen months after enactment. It seems that the United States is the last industrial country to adopt a ‘first to file’ system (Canada did so on October 1, 1989.  According to the new system, the first inventor to submit an application for an invention to the patent office would have the right to claim that invention. Under the former ‘first to invent’ system there was an uncertain, expensive, and time consuming process (known as Interference Proceedings) to determine which competing application owned by different applicants was entitled to a patent. The ‘first to file’ system eliminates this process and replaces it with public notice of an inventor’s priority filing date and other relevant details which can be easily verified.

In the modified ‘first inventor to file’ system, the critical inquiry now becomes ‘when was the application filed’ rather than ‘when was the invention conceived?’ Essentially, the new system is anticipated to result into a race among applicants to the Patent Office, since the filing date alone determines the actual winner. This move substantially harmonizes the United States patent system with the patent laws of the rest of the world.

2. Filing by other than inventor

By making departure from the earlier provision and the practice, the new law also provides that the filing of an application by a party other than the inventor who is able to demonstrate entitlement to ownership of an invention (e.g. by employment contract, assignment, or other form of transfer) is now possible as in other countries. With an acceptable proof, a person to whom the inventor has assigned or agreed to assign the invention may now file an application as the agent of the inventor, and the patent can be granted to the applicant and not constitutionally to the inventor only as before. This provision also brings the US law in conformity with those of other countries where the assignee files the application rather than the inventor.

3. Grace period vis-a-vis priority date

The new law provides a one-year grace period for an inventor’s public disclosure prior to the first filing, so that an inventor’s own disclosures in the grace period will not be prior art that will prevent a patent from issuing. Further, while prior disclosure or public use in the context of grace period was relevant to patentability, if the activity occurred within the US territory under the previous law, but the same is now on the global basis under the new law. A new term, “effective filing date,” is introduced, meaning the date on which the inventor filed an application for the invention in the U.S. or elsewhere. The date of first disclosure - a date prior to the effective filing date – may determine both entitlement to apply for patents and applicability of prior art under the new law. The grace period under the new law and the one-year international priority period permitted under U.S. law or treaty are additive.

4. Best mode requirement

An inventor is required not only to describe the invention and to teach how to make and use it, but also to describe how to practice the invention in the best way; this is an essential requirement known as ’best mode requirement’ in various patent laws. As in the existing US law, this requirement is unchanged in the new law but the ‘best mode’ violation or non-fulfillment of this requirement would not be the basis for invalidating the patent. Further, the lack of ‘best mode’ would neither be the basis for challenging a patent or a defense to patent infringement.

5. Micro-entities

A new category of inventors / applicants as ‘micro entity’ has been introduced to permit an even greater reduction in fees (i.e., 75% of applicable fees) than “small entities” presumably with a view to spur filings from individual inventors and small businesses for which the costs of procuring patent protection are particularly prohibitive. As defined, micro entities must meet additional requirements to those for small entity status viz., i) not being named as the inventor on more than four applications, ii) not having a gross income exceeding three times the reported median household income and iii) not having assigned or agreed to assign the invention to an entity having a gross income exceeding three times the reported median household income. Alternatively, inventors employed by and under agreement to assign inventive rights to institutions of higher education qualify as micro entities.

Some observers believe that this definition is quite complicated and may result into allegations that the status was improperly claimed; a similar provision in Canadian law is reported to have proved problematic and subsequently required legislative amendment.

6. Improving patent quality

A number of provisions have now been created in the new law directed at improving the patent quality and weeding out or getting rid of patents of questionable quality much more quickly at the prosecution stage through ‘third party oppositions’ and through ‘expedited or supplemental examination’ with the benefit of the better technical expertise of the USPTO (as opposed to non-specialist courts) at considerably less expense than through litigation.

    • Authorization for prioritized examination

Under the new law, USPTO can offer expedited examination for applicants who are able to pay a premium. Large entities, for example, can pay $4,800 and then expect to receive a first action from the USPTO Patent Examiner within 12 months of filing.

    • Supplemental examination

Further, in addition to existing examination procedures, there will be new opportunities for patent owners to have corrections made in their patents through supplemental examination if new information comes to light. A patent owner will continue also to have the same opportunities as before to seek re-examination or re-issue of a patent.

    • Challenging US patents at the USPTO

The new law has now introduced an expanded system for challenging US patents at the USPTO, including a post-grant opposition procedure that can be initiated within a nine-month period following grant, which is expected to reduce litigation and litigation-related expenses. The former somewhat problematic procedure of ’Inter Partes Re-examination’ which involved re-examination where both the patent owner and the challenging third party would make written submissions on the basis of patents and other printed publications only is still available but after the expiry of the period for post-grant opposition. Both the procedures are with a time-bound outcome and at higher threshold, i.e. at least one challenged claim is more likely unpatentable on the basis of the evidence submitted.

7. Enhancement of USPTO fees

To tackle the unprecedented backlog of patent applications and to raise the quality of its operations by hiring and training examiners, USPTO has been making an unsuccessful plea to build its own internal reserve for this purpose out of the cash surplus generated by the fee charged by USPTO that ends up in Government exchequer. Towards meeting this objective, the new law allows USPTO to charge a ‘temporary’ 15% surcharge on all fee upfront that would become effective on 26 September, 2011.

8. Miscellaneous provisions

  1. Creation of four satellite offices. The first USPTO regional office is to be in Detroit.
  2. Establishment of a “Patent Ombudsman Program” for small business concerns.
  3. Establishment of studies related to various patent issues.
  4. Ban on applications for protection of certain tax-related strategies.
  5. Ban on patenting of claims directed to or encompassing human organism..
  6. Elimination of the requirement for an oath or declaration in support of a US patent application to be signed by the/each inventor; this provision is expected to remove difficulties arising due non-availability of inventors or simply being uncooperative.

Conclusion

It is evident that the reforms under the America Invents Act are aimed at for promoting greater efficiencies and opportunities which will enhance innovation and job creation in the US. Obviously, many of the reforms will simplify access to the US patent system for the applicants, particularly the foreign applicants.

This brief overview provided herein highlights keys changes to the US patent system brought about by the new Act, but it also includes many other important changes.

References

  1. Leahy-Smith America Invents Act (HR 1492)

Patenting Jugaad!

Introduction

Last year on Independence Day, the Economic Times1 published an article wherein it was mentioned that as per one survey, 81% of Indian businessmen attributed ‘Jugaad’ as the key reason for their success. Jugaad is a colloquial Hindi word that literally means ‘innovative fix, most often which is somewhat an unconventional solution to a vexatious issue. The term ‘Jugaad’ and the concept it denotes is not only in common use in India (even in non-Hindi speaking areas) but is also being increasingly recognized all over the world as an acceptable form of frugal engineering pioneered in India, usually signifying the creativity of the Indian people to make existing things work or to create new things with meagre resources.

Some years ago, enterprising street mechanics in Punjab mounted a diesel irrigation pump on a steel frame with wheels, creating a vehicle they dubbed as ‘Jugaad’. Such ultra-cheap modes of transport defy vehicular regulations and are not registrable but fulfill an existing demand. Many variants of such vehicles dot the rural landscape in India and elsewhere. Such innovations do not require high investments in conventional R&D: these simply need creativity and imagination of ordinary people. Over time, ‘Jugaad’ has come to mean ‘grassroots innovations’ pioneered by National Innovation Foundation (NIF)2 in India that maintains a repository of more than a hundred thousand such innovations that have been devised mostly by uneducated rural folks and school drop outs.

Many companies in the corporate sector and in small and medium enterprises in India take strong interest in adopting ‘Jugaad’ as a practice to reduce R & D and development costs. It helps them find quick-fix solutions and maintain a leadership position in the market with their products and processes even if these do not have strong inventive contents and therefore lack patentability.

Grassroots Innovations vis-a-vis Intellectual Property Provisions

The grassroots innovations or the modern day jugaad (creative improvisation) based on individual ingenuity crave for intellectual property protection much the same way as regular science based inventions to gain from their commercialisation. However, since their science and engineering base is often not strong enough to provide adequate inventive content the grant of regular patents for these generally remains as a pipedream. Further, the nature of these improvisations is applicable for small localised markets and for shorter periods, their patenting process also needs to be swift albeit for shorter terms.

Admittedly, NIF has filed 182 patents in India and seven in US and one PCT application for the grassroots innovations from its repository. Of these, 33 patents have been granted in India and four in US. Obviously, these hand-picked cases are seemingly patent-worthy but myriads other are not distinctive to enable them to be granted protection under existing patent laws. More specifically, Indian Patent Act now rendered TRIPS complaint as per international norm is simply not suited to provide any protection to such grassroots innovations or technical improvisations that we fondly call as ‘Jugaad’.

The question now is, if there is anyway, we can provide protection to such technical improvisations through any easier way?

New Petty Patents Bill

Yes, the stimulus to such Indian innovations is on the anvil through the provisions of petty patents. A new bill for making provisions for protection of petty patents such as these is understandably under active consideration of the Government of India currently following the comments solicited on a discussion paper on the subject. When implemented as an Act, most of the above mentioned technical improvisations would qualify for grant of patent protection under the new law on ‘Petty Patents’. ‘Petty’ literally means ‘trivial’ or of ‘little importance’. Nonetheless, the technical improvisations that we are referring to as ‘Jugaad’ are no less important for our economic growth since the survival and growth of our manufacturing in the SME sector is believed to be largely dependent on these.

The idea of bringing the new ‘Petty Patents’ or ‘Utility Model’ Act to life in India is certainly not a new or unique. The DIPP’s discussion paper3 of 13 May 2011 referred to above itself gives details of scores of countries who have promulgated such laws. Thus, similar Acts with minor differences as per local situation are already in vogue in many countries and are variously known as utility model patents (not to be confused with utility patents of US!), utility solution, utility certificate, simple patent, innovation patent, short-term patents etc. all of which represent incremental inventions falling short of the scope of protection of patents. Most jurisdictions grant these patents after little or no examination. Substantive examination of whether the patent claims are actually valid may occur during litigation. Germany was perhaps the first country to bring in such a law as far back as 1891 where it is referred to as ‘gebrauchsmuster’ and is said to be popular to the extent that 85% of all patent applications are for this form of patent.

There seems to be a widespread support4 for introducing the two-tier patent system in India for sub-patentable innovations as per the comments and feedback received from general public, patent consultants and attorneys, concerned government department, industry and industrial associations both from India as well as from abroad. Among the government departments that have favored the proposal include Ministry of Micro, Small and Medium Enterprises, Ministry of Heavy Industry and Public Enterprises, Ministry of Chemicals and Fertilizers, Department of Biotechnology, Department of Science and Technology and Defense Research and Development Organization. Among the industry associations, CII and FICCI as well as COSIA are in favour of enacting the new law and expand the scope of protection to second-tier innovations. Well known patent attorneys are also in favour of bringing in the new law which they believe would spur innovation in India. The reason for such a strong support in favour of the proposal is apparently due to the fact that despite increasing number of patent applications under the current patent law, the applications from the domestic applicants tends to be no more than 20% of all applications. Thus majority of applications with reasonably high level of inventiveness above the current threshold is from abroad and not from the domestic players who are either keen to exploit the Indian market or checkmate the Indian competition, if any. Thus, most respondents strongly feel that the new lower level patent protection would be beneficial for the SME sector in India.

The consolidated view point of all major stake holders in India encompass the following:

  • A separate law for ‘utility model’ or ‘petty patent’ registration be enacted.
  • The term of protection may be between 5-10 years with a grace period of no more than 6 months. The patent registration may take 30 days or no more than 6 months and could as well be on-line
  • The scope of protection should definitely cover mechanical engineering, electronics, electrical and optical devices. The opinion on whether biotechnology, pharmaceuticals and chemicals should be covered under the new law is somewhat divided; many have explicitly suggested for their exclusion maintaining that the provisions of standard Indian Patent need not be diluted whereas others feel that some portions of traditional Indian medicines e.g., new compositions, medical instrumentations etc. should be covered. There is also some support for covering non-patentable items in Indian Patent Act under the new law, viz., agricultural and business methods and computer software
  • Relative novelty and industrial applicability should only be sufficient conditions for consideration of protection without any regard to ‘inventive step’

Relevance for Developing Countries

It is widely believed that for enhancing economic growth in developing countries, it is important to promote inventions and technological innovations which mandate adequate protection to IPRs. Multi-lateral negotiations under World Trade Organization led by such beliefs have already brought patent laws in most countries as TRIPS compliant. However, to what extent the globally harmonised IPRs and more particularly the patents in their standard form benefit developing countries remains a major concern. A recent study5 of UNCTAD focuses on this very subject and has probed in the substantive features with empirical analysis of the utility model system as prevalent in many countries, i.e., Germany, Japan, Korea, China, Taiwan and Malaysia to draw policy implications for developing countries.

This study justifies lowering the thresholds of protection in order to extend protection to minor or incremental innovations, especially in those developing countries where SME sector is not extensively knowledge based and yet plays an important role in productivity growth and incremental innovation. As per its conclusion, introducing a utility system could potentially stimulate further innovation as follows:

  1. Less knowledge-based industries would be able to seek protection for innovations not meeting inventiveness requirement for a standard patent.
  2. High-knowledge industries like the semiconductors, ICT-related products and computer peripherals would be able to protect lower-end innovations with a more economical alternative to patents.

The report also suggests certain essential features of an ideal utility model for a developing country for sustainable development. Accordingly, it is suggested that the subject matter of protection under the utility model law should mirror the exclusions under the patent law. In addition, excluding some other types of invention as dictated by public policy such as chemicals or pharmaceuticals or biological material or substances or processes may also be considered. Non-examination system, at least for the first period of registration is suggested to be one of the key ingredients of the utility model system.

The Paris Convention for the protection of Industrial Property, of which India has been a member since 1998 provides for national treatment of utility model applications and a right of priority for the purpose of filing of applications in other member countries within a specified grace period. It also permits filing a utility model application in country by virtue of a right of priority based on the filing of a patent application and vice versa. The Patent Cooperation Treaty (PCT) entered into force in 1978 of which India has been a member since 1998 also permits filing of utility model applications through the national phase utilizing the priority dates and flexibilities applicable to patents.

The agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) that entered into force in 1995 and of which India has been a member since 1995 does not specifically mention utility models. Nonetheless, the member countries are free to adopt the utility model system as an additional IP protection mechanism as long as it does not contravenes the provisions of standard patent law in accordance with TRIPS. A comparison of special features of ‘utility model’ laws as implemented in various countries throughout the global is provided in an interesting paper available on the internet6 .

The View from Behind

Notwithstanding a widespread favourable response to the proposal for a new bill on ‘utility model’ patent law for India, there are several voices of dissent and caution. It has been advised that much deeper analysis of the impact of such patent laws with lower inventiveness threshold in other countries should be carefully carried out before drawing any conclusion. The opinion received from Japanese Intellectual Property Association is clearly against a ‘utility model’ law for India based on the fact that it is no longer a preferred option for protection of innovations in Japan. It also cautions that a utility model system without examination would cause uncontrolled proliferation of low-level technologies eventually defeating the very purpose for which it is being promulgated. A brief review of the history of Japanese utility model law, however, is quite educative and one can quickly learn if and how a new ‘utility model’ law is desirable and when.

The first utility model law in Japan was enacted in 1905 essentially to foster technological innovations of small and medium sized enterprises. The utility model system as devised was rapid and easier, and well suited for SMEs. This was well received till about 1980 when it began to be less attractive on account of no significant cost differentials and increasing delays. By then, in fact, many large companies also started filing utility model applications in significant numbers. In response, the Japanese government revised the utility model law to allow accelerated registration without examination and limiting the term of protection to six years. Nonetheless, utility model system steadily lost its popularity over time with significant drop in applications; approximately 191,000 (1980) to 77,000 (1993) to 8,000 (2003). One view on this historical drop in applications of utility model system in Japan is that it does not presently serve any important role in incremental innovations given the technological competitiveness of its companies including that in the SME sector. Such an argument is generally advanced for USA also, which perhaps is the only country without a utility model system.

The erstwhile Australian petty patents system that had a term lasting for six years is also known to have received a very poor response. The same was abolished in 2001 and replaced with a new system known as ‘Innovation Patents’ that has the term of eight years from the filing date.

A quick word on the performance of Chinese utility model system is in order which is often viewed as very valuable and popular. It is quick and costs about 40% less as compared to regular patent and is certainly without examination. Despite its huge popularity, it is not without its own problems. With increasing number of applications without examination is leading to large number of re-examination and invalidation requests. Consequently, a Re-examination Board also now exists which is stated to handle as many as 40% of all cases approved under the utility model system.

Conclusion

With overwhelming favourable response to the consultation paper of the Government of India, there is no doubt that the work on preparing the draft legislation is the next logical stage. It is learnt that the task has already been initiated with the proviso that the details would be thrashed out after further broad based consultations. It is perhaps too early to predict as to the overall scope of the new law with respect to the subject matter. There is no doubt, however, that exciting opportunities lay ahead for SMEs and those who are churning out ‘jugaads’. It can be hoped that the law makers are well aware of the challenges and the problems likely to be confronted and their possible solutions.

References

    1. Aiyar SA, ‘Jugaad is our most precious resource’
    2. National Innovation Foundation
    3. Department of Industrial Policy & Promotion, ‘Utility Models:13 May 2011′
    4. Suthersanen, Uma ‘Utility Models and Innovation in Developing Countries’ (UNCTAD-ICSTD)
    5. Department of Industrial Policy & Promotion, ‘Utility Models:13 May 2011′
    6. Richards, John ‘Utility Model Protection Throughout The World’