Sometimes, what appears to be a perfectly ordinary search can become very complicated, while some technical fields throw up difficulties by their very nature. In this section you can learn how examiners rise to such challenges.
Notorious knowledge is a concept defined by the Boards of Appeal of the European Patent Office which may be relevant during the assessment of the inventive step of a claim, namely to establish whether a specific technical feature is known in the state of the art or not.
Over the years, the Boards of Appeal have defined that notorious knowledge must be undisputably part of common general knowledge and must be such that technical detail is not relevant. Given these conditions, there is no serious procedural violation in refusing without any documentary evidence a claim, which only comprises features which are either non-technical or technical but notorious.
In patents, for claiming certain kinds of products which have a characteristic structure in the micro- or nanometer range the ways of defining the scope of the claim are limited. There is not a homogeneous, single approach in the prior art. These products can be defined in terms of materials, performance or structural parameters including unusual parameters, unusual measuring methods, product-by-process definitions or a mixture of these features.
As the searcher interested in prior art searches has very limited structural ways of describing these products it is necessary for the development of a search strategy to get an insight into the essential manufacturing conditions of the products, into the structural and performance features implied by this method of production as well as into the definition and measuring methods of the parameters.
Based on this analysis a three-fold Search Concept can be applied: the direct search for the parameters claimed, the search for prior art using similar manufacturing conditions and a search for similar effects and problems to be solved.
Claims involving a mix of technical and non-technical features appear in patent applications across almost all technical fields nowadays, in particular in the context of computer-implemented inventions.
This paper discusses how the European Patent Office (EPO) approaches the search of such mixed-type claims, taking into account both the legal framework of the search and the technical particularities of the inventions. Specific attention is given to the latest updates of the Guidelines for Examination at the EPO and to the recent development of the Case Law of the EPO's Boards of Appeal.
This article presents a case study for a patentability search in Espacenet, to demonstrate an EPO examiner's search strategy. It is shown how to structure and refocus a search in Espacenet, although it has to be kept in mind that Espacenet does not offer all features the highly sophisticated search tools of examiners have. It is explained how to set up a search table and how to find the appropriate classification using Espacenet. The search table helps to structure and prioritise the search. A complete search strategy is not only about finding novelty destroying documents, but should also include searching documents relevant for inventive step. It is demonstrated how to use the problem-solution-approach to refocus the search towards inventive step.
The EPO has developed a dedicated classification scheme for climate change mitigation technologies(CCMTs), where relevant patent publications are "tagged" and classified into a separated scheme which is fully integrated within the Cooperative Patent Classification (CPC).
This allows for non-patent experts to search for climate change-related technologies in a more user-friendly fashion. The scheme has been continually expanded in recent years and is now considered complete for CCMTs, covering seven main categories, namely energy, greenhouse gases (GHG) capture, buildings, industry (including agriculture),transport and waste and wastewater management.
A classification scheme for smart grids, Y04S (a spinoff of Y02), has been also developed. Both classifications ease the access to patent documentation in sustainable technologies. An overview of the structure of the Y02/Y04S scheme is presented together with examples of how this can be used (i) to find relevant technologies and their owners and (ii) to provide technical, legal and business information to support strategic decision-making in the field of climate change.
This workshop looks at the best way to search inventions based on functional features. It also suggests how to efficiently retrieve relevant prior-art when the target technology is more functionally than constructively defined, as, for example, in multi-use devices, programmable elements and substances with equivalent effects. In such cases, a search based on structural features is complemented by a functional and conceptual approach, giving a solid representation to the technical scope of the invention, its intended use or uses and the expected technical advantages.
The workshop examines how the functional approach differs from the structural one, and presents some recommendations on their use during the search process. The first part of the session will outline useful tactics for dealing with functional features, with particular focus on a Query Builder based on three levels: the systematic description of equivalents, the enumeration of possible embodiments, and result-oriented queries.
After the theoretical input, the participants will be involved in practical exercises by actively performing a search of some functional concept. Case studies will be presented in the field of electricity and smart grids; however, the participants will be invited to propose other examples in various technical fields (e.g. mechanics, electricity, physics, chemistry or bio-technology) in order to evaluate the general applicability of the proposed methodology.
This workshop will demonstrate efficient strategies for searching mechanical inventions, particularly in the field of medical devices. In the introductory part of the presentation, there will be an explanation of search strategies in a generic mechanical field. Special emphasis will be given to the structure and concepts behind the CPC scheme’s coverage of medical devices. In the main part of the presentation, real-life examples of viable search strategies will be shown. The search strategies will be demonstrated using Espacenet.
Participants should have a basic knowledge of Espacenet and the CPC.
Every year the European Patent Office receives hundreds of patent filings relating to peptides and their functional applications in the fields of biotechnology, pharmacology and cosmetics. This workshop will give you an overview of the patent search tools, relevant databases and strategies for searching claims for short amino acid sequences and their functions. It will emphasise how to use the relevant patent classification to improve the search results. The use of practical examples will illustrate how an efficient search strategy can be developed in line with the requirements of novelty, inventive step, unity of invention and sufficiency of disclosure provided by the European Patent Convention (EPC).
Developing effective search strategies is a key part of the patenting procedure. An applicant and an examiner will apply different strategies to obtain the best results when drafting a patent application or finding the closest prior art for a set of claims.
This workshop will present a dual approach to identifying constraints and important steps during searches. Working interactively, participants will use real-life examples to develop search strategies for applicants and search examiners.
We will focus on the "search-evaluation loop" and perform in-depth analysis to set up "feature groups" for applications from fields related to mechanics. Participants will learn how to optimise their search strategies in line with the mindset of the examiner.