XNUMX. XNUMX.Introduction

　A third-party patent search is a search to find out whether a certain product (implemented technology) infringes another's patent.In addition, it is also called infringement prevention search, clearance search, FTO search (Freedom To Operate), etc., and there are differences in the culture and policy of each client in how to proceed with the search.2019 columnIn this article, I will introduce some of the applied methods for investigating the rights of other companies that are in line with the actual situation, which I have learned through dealing with clients.

XNUMX.Principle of unity of rights

　In the previous column, I introduced the concept of "principle of unity of rights".The idea is that only the working technology (working act) that satisfies all the constituent requirements of the claims satisfies the scope of the claims and constitutes patent infringement.Based on this way of thinking, in example XNUMX below, "solution" is considered to be a superordinate concept of "ice cream solution", and it can be said that the working technology infringes patent γ.

Example XNUMX.
Implementation technology: Ice cream solution containing Additive A and Additive B
Patent γ: (Independent Claim) Solution with Additive B
* We think that patent γ has two constituent requirements: “γ-1 Additive B is added” and “γ-2 solution”.

　Here, in the previous column,

　Strictly speaking, the "solution" of γ-2 of the patent γ is a patent that assumes even "ice cream solution", and the scope of the right (so-called "range") is ice cream solution. In some cases, inclusion or non-inclusion is a point of contention.

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　This time, I will turn my attention to the fact that I used a somewhat connotative wording.

　

　Based on the principle of unity of rights, it can be said that the working technology infringes the patent γ. In many cases, it depends on the scope of rights assumed.In practice, determining whether the scope of rights encompasses that assumption is not a simple matter.In this article, we use simplified wording because it is a column. I would like to proceed with the following story as "low".

XNUMX.Applied way of proceeding in accordance with the actual situation

　Whether the risk is high or low depends largely on the degree of assumption, so it is necessary to judge the “degree of assumption”.As for how to judge the degree of assumption, there are many cases where hints are hidden in parts other than the independent claims of the patent.

XNUMX Dependent Claims

　There are two main patterns when hints are hidden. The first pattern is when the assumption is clarified in the dependent clause.For example, as in Example XNUMX below, the dependent claims of patent γ limit the field/use of the solution.

Example XNUMX.
Implementation technology: Ice cream solution containing Additive A and Additive B
Patent γ: (Independent Claim) Solution with Additive B
　　　　　: (dependent claim) Solution of (independent claim) which is a solution used for confectionery
* From the dependent claim, it can be seen as a dependent constituent requirement that the field/use of the solution is "γ-3 confectionery field".

　In Example 3, information on the subordinate constituent element "γ-XNUMX confectionery field" was obtained, and "The 'solution' indicated in the independent claim was a claim made by upgrading the solution used for confectionery. or?” comes to mind.In such a case, the "solution" indicated in the independent clause is considered to be "a solution containing an ice cream solution, which may be a kind of sweets," and the degree of assumption is high, so it is judged as "high risk."

　Now, what about the reverse example, example XNUMX below?

Example XNUMX.
Implementation technology: Ice cream solution containing Additive A and Additive B
Patent γ: (Independent Claim) Solution with Additive B
　　　　　: (dependent claim) solution of (independent claim) for pharmaceutical use
* From the dependent claim, it can be seen as a dependent constituent requirement that the field/use of the solution is "γ-3' medical use".

　In Example 3, the information on the subordinate constituent element "γ-XNUMX' medical use" was obtained, and the question was "I see, was the 'solution' indicated in the independent claim supposed to be for medical use? ' comes to mind.In such a case, the ``solution'' indicated in the independent claim is considered to be ``for medical use and not a solution containing an ice cream solution, which is generally difficult to say for medical use,'' and the degree of assumption is low. judged to be low risk.

XNUMX Description in the specification

　Another pattern where hints are hidden is when assumptions are clarified in the description in the specification.For example, as shown in the example below, in Example XNUMX, the description in the specification of the patent γ describes and exemplifies the field/application of the solution in detail.

Example XNUMX.
Implementation technology: Ice cream solution containing Additive A and Additive B
Patent γ: (Independent Claim) Solution with Additive B
　　　　　: (Description) ...This solution can be used for pudding and ice cream.
* From the description in the specification, it can be seen that the application of the solution is also assumed to be "ice cream".

　In Example XNUMX, information is obtained that the application of the solution is also assumed to be "ice cream", and the "solution" indicated in the independent claim is considered to be "a solution for ice cream", and the degree of assumption is high. Judged as “high risk”.

　Similarly,

Example XNUMX.
Implementation technology: Ice cream solution containing Additive A and Additive B
Patent γ: (Independent Claim) Solution with Additive B
　　　　　: (Description) ...This solution can be used for pharmaceuticals.
*From the description in the specification, it can be seen that the application of the solution is assumed to be "medicine".

　In Example XNUMX, information was obtained that the use of the solution is assumed to be a "pharmaceutical". The degree of thinking and assumption is low, and it is judged as "low risk".

　It is basic to judge infringement/non-infringement of the working technology for each claim of each patent, and it should not be judged by mixing independent claims and dependent claims or the full text of the specification.However, by considering the dependent claims and the information in the specification, it is possible to infer a wide range of claims that exist in the independent claims by analogy, and it may be used as a material to judge the level of risk for the independent claims of the working technology. .

XNUMX Others

　I have shown the hidden places of the two patterns of hints, but there are some other information to judge the "degree of assumption".For example, information on other patents owned by the same patentee (applicant) and the company website of the patentee.In the first place, if you know what kind of business the patentee is making a living from, you may be able to guess what the patentee assumes, even if it is a broad independent claim.Of course, due to the recent diversification strategy, there may be cases where we assume a wide range of fields, but I would like to keep this kind of information as a help in judging the degree of assumption.

XNUMX.how much risk to take

　The examples up to the previous chapter show that information such as dependent claims and specifications can be used as information for determining "to what extent is/is not assumed" a "solution (broad independent claim)". I was.However, is it really okay to say that "unexpected = low risk"?The answer is, "I can't say that it's really okay."This is because, as an independent clause, it is a "solution", and simply judging it based on the principle of unity of rights would still result in "infringement".Then, how should we apply the applied method of proceeding up to the previous chapter to Freedom To Operate?This has a lot to do with the judgment of the person in charge of intellectual property of the client company (hereinafter referred to as the customer representative), as well as the corporate culture and policies.

　Let's use an example where the customer representative is from a confectionery company that manufactures and sells ice cream solutions.In the case of example XNUMX above, when asked, "Isn't the risk "high"?", the customer representative will often say "Yes."However, in the case of Example XNUMX, there are cases where the customer representative also judges that the risk is "low", while others say, "No, it is a solution in the independent claim, so it infringes." It is not that ice cream is denied in , so it is dangerous to say that the risk is “low”.”

　There will be companies with various ways of thinking in the confectionery industry itself.When coordinating with the customer representative how much patent literature should be reported, I would not be bound by my own ideas, but rather how the customer representative in front of me would think and how I would arrange the report. If so, I try to think about whether it matches the business activities of the customer representative.For example, in the case of a customer representative who thinks, "No, it's just a solution in terms of independent claims, so it infringes." The field indicated in the specification is a different field that is not the field of ice cream, etc."Patent document groups with this negative flag attached can also be confirmed by lowering the priority of detailed examination separately from other patent document groups.In fact, there have been many cases where we have responded in this way and have been pleased.Among them, there are quite a few people who think that the customer representative thinks that the risk is "low" and that the extraction (report) of such patent document groups itself is unnecessary.

　The person in charge of the client probably has limited time to check the report, and depending on the experience of the person in charge of the client and the company policy, it is likely that the risk is low if the patent is in a different field. , even if a patent that is supposed to be in a different field is sued, there are many ways to avoid it.”In this article, I will omit the discussion from the perspective of the design of the research population, but in meetings, etc., I asked questions such as "how far to expand the population?" “Is there a risk of being sued (high or low)?” and “How do you think about that risk?” .

XNUMX.in conclusion

　In this article, I introduced how to proceed with the search of the rights of other companies that I am conducting in an applied manner.The attitude of the person in charge of the customer and the culture and policies of the client company have a great influence on how to proceed with the search.I also learned a lot through various searchs with various companies and people in charge.We will continue to hone our responsiveness and strive to contribute to the development of the world's industries.

Research Division Hashima

【reference】

Basics of how to proceed with the rights search of other companies
https://aztec.co.jp/news/columns/331