April 29, 2019 at 11:11Patent research in IT. The course of the young fighter. Part I. How to understand customer requirements and prepare a report template
Here is the first article from the cycle for those who want to learn how to do and execute patent research correctly and report with their help to the customer. We understand the terms, prepare a template for a report on patent research.
1. My thorny path to proper patent research
In our research department of the MDGs, when preparing reporting documentation on research, development and other projects for the state customer, patent studies are carried out. This event is usually fixed by a separate paragraph of the statement of work, which can be closed by submitting a report on patent research, prepared in accordance with GOST 15.011-96 “System for the development and putting products into production (SRPP). Patent research. Content and procedure. ” Sometimes specialized organizations are involved in such work, but more often than not, we conduct patent research ourselves: it’s more convenient and faster. In the case of the unique and high-tech products of the MDGs, it is easier for researchers to conduct a study than to explain to an outside lawyer the subtleties of biometrics in face and voice, the principles of speech recognition and synthesis.
A year and a half ago, I actively entered into the patent research process and, together with researchers, began to conduct patent searches, analyze patent information and issue reports on patent research. During this time, I realized that representatives of the state customer patent research carefully read. Moreover, they not only read, but also find it easy to fill out the mandatory and recommended applications and tables. The relying party scrupulously examines reports on patent research and requires clarification even in cases where a fundamentally new product is being developed for the Russian and world markets.
I decided to talk about my experience with patents in several articles. This text is devoted to the preparation for patent research and the state standard by which they are carried out - GOST R 15.011-96 System for the Development and Putting Products into Production (SRPP). Patent research. Content and procedure. If patent research is indicated in the TOR for the project, then this GOST will also be indicated. If this standard is not mentioned in the requirements of the customer, ensure that it is named there. GOST R 15.011-96 - the support of a patent researcher. True, this support was written in the last century, so some applications and tables are stupid, and some requirements and terms need to be explained in detail.
If you plan to read my post further, be sure to openGOST R 15.011-96
2. GOST R 15.011-96. We read together
Patent studies are defined in the standard as follows: “ Patent studies are studies of the technical level and development trends of economic entities, their patentability, patent cleanliness, competitiveness (efficiency of intended use) based on patent and other information ” [1].
This definition indicates that the report on patent research should reflect the research of:
- the technical level,
- development trends of the object,
- patentability,
- patent purity,
- competitiveness.
Concept of technical levelis interpreted in the legal and methodological literature as the degree to which patenting of the most advanced technical solutions ensuring the achievement of its optimal indicators, parameters or characteristics is realized in a given object [2]. Do not confuse with the prior art , which means any information that has become generally available in the world before the priority date of the invention.
Patentability - a set of properties of an object of technology, without which it cannot be recognized as an invention. These properties are listed in Art. 1350 of the Civil Code of the Russian Federation: “An invention is granted legal protection if it is new, has an inventive step and is industrially applicable” [3].
What does “is new” mean? It's simple - it does not have to be known from the prior art (see definition above). That is, no one has ever invented the exact same product before you. Similar, similar objects of technology can exist and most likely will be, but they will definitely have differences.
What is inventive step? This is not obvious from the prior art for a specialist. What criteria are used to select “specialists” and how they evaluate the inventive step is not explained anywhere. This property means that the invention was obtained not as a result of mechanical connection of previously known objects, but as a result of creative work.
With industrial applicability, everything is simple. It means that the invention can be applied in industry and other areas of the economy or social sphere.
Now let's deal with patent purity . This legal property of an object of technology lies in the fact that it can be freely used in a particular country at a particular point in time without violating the exclusive rights of third parties. In patent research, patent purity is always determined at a specific date for a particular list of countries. The list of countries should indicate your customer in the TOR for the project. If there is no list, then you determine the patent purity only for Russia at the current date. If the list of countries is given, then Russia should be mandatory.
Notice how widely the subject of patent research is interpreted., this is the object of economic activity (goods), and the economic activity of the subject. Such a broad interpretation, on the one hand, indicates that the GOST for patent research is intended not only to create reports, but also to facilitate management decisions. On the other hand, when conducting patent research, it is necessary to consider and reflect in the report all the activities of the organization, including all intellectual property objects belonging to it, scientific activity, market position, development prospects.
Competitivenessit is explained in the text of the standard as the ability of an object of economic activity in a certain period to ensure commercial or other success in a particular market in the conditions of competition or opposition. The remaining terms included in the definition are not interpreted in GOST.
3. What does the customer want?
As we see, the definition of patent research given in GOST includes quite a few properties that need to be investigated. Such a broad definition allows the customer to formulate the ToR paragraph on patent research quite briefly. For example, the customer at this point may write that he needs to conduct patent research in order to determine patent purity. This does not mean that such research determines patent purity, but does not describe the technical level. Patent research, by definition, includes determining the technical level, development trends of an object, patentability, patent purity, and competitiveness. An indication in TK of a particular aspect of patent research merely indicates that close attention needs to be paid. How to show this close attention in the patent research report? Fill in the mandatory and recommended forms of GOST related to the property that the customer is interested in.
Clause 5.1 of the GOST provides other aspects of the content of patent research in the general case. They are advisory in nature, supplement and disclose the above list. It is important to understand that the abstracts listed in clause 5.1 should not be made as separate paragraphs of the patent research report. Clause 7 of the GOST defines the structure of the report on patent research.
4. Structure of a patent research report: preparing a template
Patent research is easy if the template is ready. Clause 7 of the GOST indicates the structural elements of the report and their summary. I advise you to prepare a template with all the structural elements and recommendations for their completion from clause 7.2:
- Title page
- List of artists
- Contents
- A list of abbreviations, symbols, symbols, units, terms
- General information about the object of research
- Technical level and development trends of the object of economic activity
- Use of industrial (intellectual) property and their legal protection
- Study of the patent purity of the object of technology
- Analysis of the business entity and prospects for its development
- Conclusion
- Appendix A Task for conducting patent research *
- Appendix B Rules of the search *
- Appendix B Report on claim *
- Appendix G. Analysis of the business entity and its development prospects *.
* means that GOST has a design template
In bold type in the list, select the partition, which the report should be mandatory, if the customer requires otherwise.
The bold italics in the text highlight the so-called main (analytical) part, that is, the part that the researcher writes based on the information received.
An ordinary section is marked with an optional section in the list.
Appendix D of the GOST gives examples of the design of forms that are not included in a separate application, but serve to design sections of the analytical part. I’ll tell you how to fill out these forms in the following articles in my series.
Sources:
1. GOST R 15.011-96 System for the development and putting products into production (SRPP). Patent research. Content and procedure
2. Sukharev A. Ya. Large Legal Dictionary / A. Ya. Sukharev, V. Ye. Krutskikh, A. Ya. Sukhareva. - M .: Infra-M, 2003.
3. Civil Code of the Russian Federation (Part Four, Article 1350) "dated December 18, 2006 N 230-ФЗ (as amended on May 23, 2018)
1. My thorny path to proper patent research
In our research department of the MDGs, when preparing reporting documentation on research, development and other projects for the state customer, patent studies are carried out. This event is usually fixed by a separate paragraph of the statement of work, which can be closed by submitting a report on patent research, prepared in accordance with GOST 15.011-96 “System for the development and putting products into production (SRPP). Patent research. Content and procedure. ” Sometimes specialized organizations are involved in such work, but more often than not, we conduct patent research ourselves: it’s more convenient and faster. In the case of the unique and high-tech products of the MDGs, it is easier for researchers to conduct a study than to explain to an outside lawyer the subtleties of biometrics in face and voice, the principles of speech recognition and synthesis.
A year and a half ago, I actively entered into the patent research process and, together with researchers, began to conduct patent searches, analyze patent information and issue reports on patent research. During this time, I realized that representatives of the state customer patent research carefully read. Moreover, they not only read, but also find it easy to fill out the mandatory and recommended applications and tables. The relying party scrupulously examines reports on patent research and requires clarification even in cases where a fundamentally new product is being developed for the Russian and world markets.
I decided to talk about my experience with patents in several articles. This text is devoted to the preparation for patent research and the state standard by which they are carried out - GOST R 15.011-96 System for the Development and Putting Products into Production (SRPP). Patent research. Content and procedure. If patent research is indicated in the TOR for the project, then this GOST will also be indicated. If this standard is not mentioned in the requirements of the customer, ensure that it is named there. GOST R 15.011-96 - the support of a patent researcher. True, this support was written in the last century, so some applications and tables are stupid, and some requirements and terms need to be explained in detail.
If you plan to read my post further, be sure to openGOST R 15.011-96
2. GOST R 15.011-96. We read together
Patent studies are defined in the standard as follows: “ Patent studies are studies of the technical level and development trends of economic entities, their patentability, patent cleanliness, competitiveness (efficiency of intended use) based on patent and other information ” [1].
This definition indicates that the report on patent research should reflect the research of:
- the technical level,
- development trends of the object,
- patentability,
- patent purity,
- competitiveness.
Concept of technical levelis interpreted in the legal and methodological literature as the degree to which patenting of the most advanced technical solutions ensuring the achievement of its optimal indicators, parameters or characteristics is realized in a given object [2]. Do not confuse with the prior art , which means any information that has become generally available in the world before the priority date of the invention.
Patentability - a set of properties of an object of technology, without which it cannot be recognized as an invention. These properties are listed in Art. 1350 of the Civil Code of the Russian Federation: “An invention is granted legal protection if it is new, has an inventive step and is industrially applicable” [3].
What does “is new” mean? It's simple - it does not have to be known from the prior art (see definition above). That is, no one has ever invented the exact same product before you. Similar, similar objects of technology can exist and most likely will be, but they will definitely have differences.
What is inventive step? This is not obvious from the prior art for a specialist. What criteria are used to select “specialists” and how they evaluate the inventive step is not explained anywhere. This property means that the invention was obtained not as a result of mechanical connection of previously known objects, but as a result of creative work.
With industrial applicability, everything is simple. It means that the invention can be applied in industry and other areas of the economy or social sphere.
Now let's deal with patent purity . This legal property of an object of technology lies in the fact that it can be freely used in a particular country at a particular point in time without violating the exclusive rights of third parties. In patent research, patent purity is always determined at a specific date for a particular list of countries. The list of countries should indicate your customer in the TOR for the project. If there is no list, then you determine the patent purity only for Russia at the current date. If the list of countries is given, then Russia should be mandatory.
Notice how widely the subject of patent research is interpreted., this is the object of economic activity (goods), and the economic activity of the subject. Such a broad interpretation, on the one hand, indicates that the GOST for patent research is intended not only to create reports, but also to facilitate management decisions. On the other hand, when conducting patent research, it is necessary to consider and reflect in the report all the activities of the organization, including all intellectual property objects belonging to it, scientific activity, market position, development prospects.
Competitivenessit is explained in the text of the standard as the ability of an object of economic activity in a certain period to ensure commercial or other success in a particular market in the conditions of competition or opposition. The remaining terms included in the definition are not interpreted in GOST.
3. What does the customer want?
As we see, the definition of patent research given in GOST includes quite a few properties that need to be investigated. Such a broad definition allows the customer to formulate the ToR paragraph on patent research quite briefly. For example, the customer at this point may write that he needs to conduct patent research in order to determine patent purity. This does not mean that such research determines patent purity, but does not describe the technical level. Patent research, by definition, includes determining the technical level, development trends of an object, patentability, patent purity, and competitiveness. An indication in TK of a particular aspect of patent research merely indicates that close attention needs to be paid. How to show this close attention in the patent research report? Fill in the mandatory and recommended forms of GOST related to the property that the customer is interested in.
Clause 5.1 of the GOST provides other aspects of the content of patent research in the general case. They are advisory in nature, supplement and disclose the above list. It is important to understand that the abstracts listed in clause 5.1 should not be made as separate paragraphs of the patent research report. Clause 7 of the GOST defines the structure of the report on patent research.
4. Structure of a patent research report: preparing a template
Patent research is easy if the template is ready. Clause 7 of the GOST indicates the structural elements of the report and their summary. I advise you to prepare a template with all the structural elements and recommendations for their completion from clause 7.2:
- Title page
- List of artists
- Contents
- A list of abbreviations, symbols, symbols, units, terms
- General information about the object of research
- Technical level and development trends of the object of economic activity
- Use of industrial (intellectual) property and their legal protection
- Study of the patent purity of the object of technology
- Analysis of the business entity and prospects for its development
- Conclusion
- Appendix A Task for conducting patent research *
- Appendix B Rules of the search *
- Appendix B Report on claim *
- Appendix G. Analysis of the business entity and its development prospects *.
* means that GOST has a design template
In bold type in the list, select the partition, which the report should be mandatory, if the customer requires otherwise.
The bold italics in the text highlight the so-called main (analytical) part, that is, the part that the researcher writes based on the information received.
An ordinary section is marked with an optional section in the list.
Appendix D of the GOST gives examples of the design of forms that are not included in a separate application, but serve to design sections of the analytical part. I’ll tell you how to fill out these forms in the following articles in my series.
Sources:
1. GOST R 15.011-96 System for the development and putting products into production (SRPP). Patent research. Content and procedure
2. Sukharev A. Ya. Large Legal Dictionary / A. Ya. Sukharev, V. Ye. Krutskikh, A. Ya. Sukhareva. - M .: Infra-M, 2003.
3. Civil Code of the Russian Federation (Part Four, Article 1350) "dated December 18, 2006 N 230-ФЗ (as amended on May 23, 2018)