XNUMX. XNUMX.Introduction

　There are various types of patent searches, such as pre-application search, other company's rights search, and technology trend search. Among them, invalid material search is a search that comprehensively requires legal skills, technical skills, and search skills.This time, I will briefly explain the points of the invalid material search and the search strategy planning.

XNUMX. XNUMX.What is invalid material search?

　The patent rights of others may be an obstacle to conducting business.In that case, we will first consider avoiding the patent due to design changes, etc., but if it is difficult to avoid it, we will consider whether the patent right can be invalidated.The search of the materials for that judgment and the materials required for the actual invalidation procedure is called the invalid material search.The patent right is established after examination by the Japan Patent Office, and the examination is usually carried out carefully.In the invalid material search, the primary goal is to overturn a patent that has passed such an examination once, so advanced skills and strategicity are required.

XNUMX. XNUMX.Required skills

　First, legal skills related to patentability are essential.As mentioned above, in the invalid material search, patented inventions that have been searched once are the subject of the search, so materials that question novelty violations are rarely found, and in many cases, inventive step is taken into consideration. ..Therefore, it is necessary to have the ability to judge what kind of literature is suitable as a supplementary reference and what kind of description should be said to be "motivational" in accordance with laws and judicial precedents.

　Next, it is important to have a sense of imagining the target invention concept derived from legal examination as a concrete and technical description.For example, in the case of "need to describe that a particular crystal plane of material X has certain properties", "if such a description exists, it will be described with a Miller index." It was expressed in terms, description methods, drawings, tables, graphs, etc. specific to the technical field, such as "A photograph of the diffraction pattern by a transmission electron microscope may be posted as an experimental result." If you can imagine the image that can be drawn in a case with high resolution, the object of the search will be clear and the accuracy of the search will be improved.In addition, if you have knowledge about countries and players (companies, universities, etc.) that are focusing on the target technology, and knowledge about journals and journals, you can narrow down the research literature more accurately.

　You also need the skills to adapt the imaged technical content into a search formula that matches the characteristics of the database and adjust the search population to balance cost and expected effectiveness.In addition, project management skills such as always making an overall outlook, modifying the search route as appropriate, and completing the search within the period are required so that the impact on the business plan is minimized.

XNUMX.Documents to check

　Since the invalid material search targets inventions that have already been searched and once granted patentability, it is not possible to obtain good results by simply tracing the search at the time of examination.So, it is to explore the attack far from from the interaction with the applicant and the examiner in the examination (the prosecution) will become important.At least the following documents should be checked.

• Patent Bulletin
• Search report
• Notification of reasons for refusal / examination reference
• Written opinion
• Procedure amendment

XNUMX.Key points for research strategy planning

(XNUMX) Confirmation of patent gazette

　It will not start unless you check the patent gazette.It is necessary to specifically understand what the scope of claims (claims) to be invalidated is, together with the background technology and the description of the examples.
　It is also important to check the status of rights and the duration of the rights.If the right has already expired without payment of the patent fee, or if the remaining period until the expiration of the term is short and the term expires before the manufacture and sale of the product etc. (or after the expiration of the manufacture and sale) If you can move the time), there is no need to disable it.

(XNUMX) Applicant's allegation in examination

　The written opinion contains the applicant's counterargument to the reason for refusal notified by the examiner in the notice of reason for refusal.In many cases, the difference between the present invention and the prior invention is emphasized, such as "there is no description or suggestion in the prior art".If the claim is accepted and a patent is granted, the difference is the point to aim for in the invalid material search.

(XNUMX) Details of correction

　Claims are often amended during the review,There is a possibility that the correction points after the first action have not been sufficiently investigated in the examination., You might here is to attack far from.
　For example, suppose an application is filed for an invention of e-commerce, and a document with almost the same content is found at the examination stage, so the applicant adds information security features.Then, the technical fields related to the initial e-commerce (IPC: G06Q30, etc. in terms of patent classification) have been investigated, but the technical fields related to the added information security (IPC: G06F21, etc.) have been thoroughly investigated. It may not be.

(XNUMX) Scope of search at the time of examination

　You can find out the technical field and search formula searched at the time of examination from the "Search field" column and the search report described in the patent gazette.Check that there are no omissions in these, or that there are no areas to be investigated further due to the correction.

XNUMX.Summary

　So far, we have explained the basics of investigating invalid materials.The search for invalid materials is also an area where professional know-how is effective because it is difficult to obtain good results even if the same search as the pre-application search is performed.Please feel free to contact us if you have any problems with the invalid material search.

Research Division Shizuno

<Reference>
https://www.jpo.go.jp/system/trial_appeal/shubetu-muko/index.html
https://www.jpo.go.jp/system/trial_appeal/shubetu-tokkyo-igi/index.html
https://www.j-platpat.inpit.go.jp/