Technology and Innovation Support Center-TISC

Institute of Space Technology Islamabad

In April 2009, WIPO was mandated by its
member states to carry out a pilot project
to establish Technology and Innovation
Support Centers (TISCs) within the
framework of the Development Agenda.
 TISC at IST
TISC office is established at IST in collaboration with HEC,IPO and WIPO under
ORIC

Memorandum of Understanding signed on (Dec,12-2017) between IST, HEC,IPO

and WIPO
 TISC Services at IST

Core Services

 Access to patent and non-patent databases

 Assistance in using databases

Additional Services (based on user need and office capacity)

 Technology search services

 Patent analytical services
 Awareness-raising and training services
 What is Intellectual Property?

Creation of mind like Audios, poetry, books, CDs, Audio / Videos, music, movies,

video games, paintings, sports items, fabric, medicines, plane, food /drink items,

plants varieties, computer hardware / software, cars etc……….

 Brands & Inventions

 Artistic work or Creative work

 Trade Strategies
 What is Intellectual Property?

 Patent
 Trademark
 Design Right
 Copyright
 Trade Secret
What is a Patent?
Under the patents system, a government may grant an inventor a
patent for a new invention. The patent gives the owner of the patent
an exclusive right to exploit the invention by way of excluding others
from making, using, selling, offering to sell or importing the invention
without the patent owner’s consent. This right is territorial in nature,
i.e. country specific and lasts for a limited period, generally a maximum
of 20 years
Patents are intended for breakthroughs in technology, but they are
also intended for small technological improvements

like the invention of penicillin,

OR
very small improvements, such as a new lever on a machine that
enables it to work just a little faster
 What sort of things can/cannot be patented

 A chemical compound-A machine

 Processes/Product for developing or making things can be
patented
There are things that cannot be patented
 Human genes, Things that already exist in nature

 A perpetual motion machine.

 Discovery of a new planet

 Methods of medical treatment etc

Bear in mind
“moral grounds” and “national laws”
 What can be patented

Patents are available for any invention, whether processes or

products, in all areas of technology.
 Basic Criteria for Patentability

 New (novel), invention must never have been made before,

carried out before or used before
 Inventive step – Non-obvious the invention must be enough of
an advancement to be considered ‘non-obvious’ by a person
having ordinary skill in the art.
 Industrially applicable the invention must be able to be used on
a certain scale in practice.
 Disclosure the invention is not disclosed anywhere in any form
before filing patent application
 Inventive Step ?
You have invented A+B.
A is known in the prior art.
B is known in the prior art.
Upon looking at A and then looking at B, would someone of
skill in the art consider A+B to be already known?
If the answer is yes, then A+B is obvious.
If the answer is no, then A+B is not obvious.
obviousness means that
something cannot be patentable when any person of average skill in the relevant scientific/technical field could put together different pieces
of known information and from them arrive at the same result. The time period for non-obvious and inventive step varies across jurisdictions
but is typically either at the time of the application’s filing or at the time of its invention.
 Inventive Step ?
EXAMPLE
A court invalidated a patent for the blockbuster osteoporosis drug Fosamax (in once-
weekly form) made by Merck because of prior art that rendered the claimed invention
obvious. About a year before Merck filed its patent application, two articles were
published in a pharmaceutical journal about osteoporosis. These articles suggested
the use of a weekly dose of bisphosphonate to treat osteoporosis instead of a daily
dose. The weekly dose alleviated some of the gastro-intestinal (GI) complications
caused by taking the pills daily. Merck attempted to patent this once-a-week dosage of
the medicine that was seven times the daily dosage. Since the articles previously
disclosed the concept of the weekly dosage, the patent was found to be invalid because
it was “obvious” in light of prior art.
 Inventive Step ?

 if a prior art reference explicitly excludes an element of the invention, this reference may not be used to show
obviousness. This is called “teaching away.” For example, assume that prior art reference X discloses a copper
electroplating solution comprising of 1) an alkaline solution of copper sulfate, 2) any concentrated acid from
30-50 grams per liter (excluding sulfuric acid) and 3) an aqueous solution of a pH-modifying substrate in an
amount sufficient to adjust the pH to a value of from 3.5-5.0.
 Inventor A has come up with a similar invention of a copper electroplating solution comprising of 1) an alkaline
solution of copper sulfate, 2) sulfuric acid from 10-20 grams per liter and 3) an aqueous solution of a pH-
modifying substrate in an amount sufficient to adjust the pH to a value of from 3.5-5.0.
 Here, the invention would satisfy the non-obviousness requirement because the prior art explicitly “teaches
away” or excludes sulfuric acid from the claimed invention. The prior art reference explicitly states that sulfuric
acid will not work while the claimed invention states sulfuric acid may be used.
 Intellectual Property Cycle

Creation
(Invention)
Filing
Profit
applications

Protection
Utilization (Granting of
of rights rights)

Industrial property rights

The ultimate goal is to make the IP cycle more robust and dynamic.
3
 Operating profit of SMEs, comparing
those with and without patents
Per-employee operating profit at SMEs with patents are higher than those without patents.
Per-employee operating profit at SMEs with patents overseas is higher than those with patents only in
Japan.
“Operating profit at SMEs, comparing those with and without patents”
(Per-employee operating profit)
250

2.02 mil. yen

200
1.8 mil. yen

150
1.37mil. yen

100

50

0
Without patents SMEs with patents SMEs with patents overseas
4
Source: SME White Paper 2009
 Casebook of Companies Successfully Utilizing
Intellectual Property Rights
Companies that succeeded in utilizing intellectual property rights

This Casebook introduces “success stories” about SMEs that have

effectively utilized intellectual property rights.

50 SMEs were chosen by the JPO. Some of the factors

contributing to their success are as follows:

1. Filed foreign applications 5. Collaborated with academia

2. Obtained design rights 6. Licensed-out technology

3. Obtained trademark rights 7. Obtained patent Information

4. Collaborated with other companies 8. Well-structured organizations

6
 Image Showing Comprehensive Protection of IP Rights
Design of product appearance
Reg. No. 1326330
Handheld Terminal

Technology to scroll
Patent Design
a screen using a touch
screen
Tablet Information
Pat. No. 4743919 Terminal Device
Design of screen operation

Trademark Product
name, Brand name, Reg. No. 1356982
Handheld Terminal
IP Rights Logotype

11
 Cost and Benefit

In exchange the patent system requires

the inventor to provide a full
description of how the invention
works, making the invention available
to the public.
Patent Filing in Pakistan
 Provisional Patent
 Non-Provisional/Complete Patent
 Fee and Forms
https://ipo.gov.pk/patent
 Content of Patent Document

 Title
 Introduction
 Background/Prior Art
 Drawings
 Claims
 Title of Patent

1) The title of the invention should be meaningful.

2) The title should clearly, concisely and as specifically as possible indicate the
subject to which the invention relates.
3) If the patent document “preferred embodiment
contains claims of invention”
in different categories (product,
process, apparatus, use), this should be evident from the title.
4) The word “patent,” personal names, fancy names, trade names, trademarks
or abbreviations or terms such as “etc.” which do not serve to identify the
invention should not be used in the title.
 Examples
S. Non-informative examples, not acceptable Good examples to illustrate the principles Relevant paragraphs of the
No according to the Guidelines stated in the Guidelines Guidelines for the rejection of the
not acceptable examples

Chemical process Process for preparing cyclohexanediones 1-3

Treating fibers Process for coloring acrylic fibers 1-3

Arrangements giving improvements in compressors Outlet diffusor for centrifugal compressors 2

Apparatus in which ultra-sonic waves are used to Ultrasonic apparatus for testing welds 1-2
assess the correct joining of components by welding

Cable connectors Connecting devices for co-axial cables 1-2

Metal forming Metal cold-forming process and lubricant 1-3

composition therefor
 Abstract

 AN ABSTRACT OF A PATENT DOCUMENT IS A CONCISE STATEMENT OF ITS TECHNICAL DISCLOSURE

The abstract should enable the reader thereof, regardless of his degree of familiarity with patent documents, to ascertain quickly

the character of the subject matter covered by the technical disclosure. The abstract should constitute an efficient scanning tool

for searching in the particular technical field, particularly

 THE ABSTRACT SHOULD BE CLEAR AND AS CONCISE AS THE DISCLOSURE PERMITS

It should generally not exceed 250 words and should preferably be in the range of 50 to 150 words.

THE ABSTRACT SHOULD BE PRIMARILY DIRECTED TO THAT WHICH IS NEW IN THE ART TO WHICH THE INVENTION PERTAINS

 If a machine, apparatus, or system, its organization and operation; (2) if an article, its method of making; (3) if a chemical

compound, its composition and preparation; (4) if a mixture, its ingredients; (5) if a process, the steps.

 Extensive mechanical and design details of apparatus should not be given.

 Background/Prior Art

Good background section should be fairly short and merely set the stage for Detailed Description
Section. The background section could describe the prior art at a very high level. In some
jurisdictions it is not generally helpful to mention specific prior art. The background section may
conclude with a short, crisp statement about the shortcomings of the prior art but this must be
written in a manner that does not disclose the solution to be described later in the application. It
should instead be written in a manner that makes the typical reader :
“Wow! I don’t know how anyone could ever solve this problem!” think
 Detailed Description

 Detailed Description or Specification or “preferred embodiment of invention”

 Provides a sufficient explanation of the invention for an ordinary person skilled in the art to make
and understand the invention.
 Specifications cannot be amended after filing of applications, so all conceivable details about
embodiment must also be disclosed:
 Avoid using phrases such as “the invention is…” The patent agent should instead use phrases like “in
an embodiment of the invention.”

patent application cannot conceal the optimum aspects of

the invention from someone who tries to make and use the
invention described in the patent. So, for example, if the
inventors know that a precipitate is formed between 115
and 140 degrees, but also know that the greatest volumes
of precipitate are formed at 120.5 degrees, they must
disclose this information as well.
Claims
 Patent Information

This second function – the publication of patent

information – has resulted in the accumulation of
millions of technological solutions to the many
challenges that people face
 Patent Information
 Patent Information contain both technical and legal information including
a full description of how the invention works;
 a definition of the invention in the claims. These claims set out the legal scope of the
patent right in terms of the essential features of the invention;
 the names of the inventor and the patent owner (sometimes different entities);
 dates of filing, publication etc, plus various other relevant information.
 Reference to other relevant documents
 Bibliographic data

Publication number

Application number
 Bibliographic data

Publication number

Application number

Priority number
 Bibliographic data

Publication date

Filing date

Priority date
 Bibliographic data

Applicant

Inventor
 Bibliographic data

Classification
Bibliographic data

Designated states
 Description (specification)

Describes how the invention works (addresses a particular technical problem)

Provides background information on this problem Indicates other known
solutions to the problem ("prior art")
 Claims

Define the scope of protection sought by the applicant

 Accumulation of Patent Documents

 The total number of published patent documents is about two

million a year, in many different languages and in many different
technical fields.
 It is estimated that over 70 million patent documents have been
published to date
 Value of patent information

Insufficient use of patent information causes considerable waste in

R&D investment. For example, it has been estimated that European
industry loses US$ 20 billion every year through a lack of use of
patent information, which results in duplication of efforts such as re-
inventing existing inventions, re-solving problems that have already
been solved, and re-developing products that already are on the
market.
Types of Patent Search
 State of the art search

 A search performed in order to determine prior arts, available in

any part of the world and in any form or language, in relevant
field of technology is referred as a state of the art search

Includes Patent and Non-Patent Literature

 Freedom to operate or infringement search

 Putting a new product on the market in a particular country

without doing a freedom to operate or infringement search, to
discover whether there are any active patents in force in that
country that the product might infringe, can result in expensive
court actions; and possibly the award of damages.
 pulling out of the market altogether or negotiating a license with
the patent holder or designing around the scope of the patent or
getting the patent invalidated (if the local law permits a
procedure to that effect).
 Validity search
 if there is an allegation of infringement,
 attack the validity of the patent in question
That is where a validity search comes in. This is a search to see if at
the time the patent application corresponding to the patent was
filed, whether there was any prior art(s) that shows that the
patented invention is not new or inventive.
 Name search

what inventions has this individual or

this company been involved in?
Patent Databases
 Scientific Databases

PATENTSCOPE

State
Intellectual
Property
Office
Search Tools and Strategies
 Boolean operators

Also known as "logical operators"

AND (or +) OR
NOT (or
ANDNOT or -)
 Boolean operators

tennis ball

Results in PCT collection (English titles):

219 (tennis)
2'829 (ball)
3'048 total
 Boolean operators: AND

tennis
AND ball
tennis ball

Results in PCT collection (English titles)

38 (tennis AND ball)
 Boolean operators: OR

tennis OR ball

Results in PCT collection (English titles)

3'010 (tennis OR ball)
€ Avoids double counting tennis AND ball
 Boolean operators: NOT

ball
tennis NOT ball

Results in PCT collection (English titles)

181 (tennis NOT ball)
 Boolean operators: NOT

ball NOT tennis

tennis

Results in PCT collection (English titles)

2'791 (ball NOT tennis)
€ Order of terms matters
 Boolean operators: Uses

OR: synonyms or related concepts

corn OR maize € synonyms
corn OR plant € related concepts
AND: additional concepts corn AND fertilizer
 Proximity operators

Define the maximum "distance" (number of terms) between

search terms

€ Ensure that search terms are "in context" with eachother

 Proximity operators: Ordered

Ordered: Search terms must be in given order (and within specified

distance)
corn BEFORE5 fertilizer (in PATENTSCOPE)
 Proximity operators: Unordered

Unordered: Search terms can be in any order (and within specified

distance)
corn NEAR5 fertilizer (in PATENTSCOPE)
 Question

How would you carry out a

search for inventions related
to blood pressure?

Photo source: Pia von Lützau

 Boolean operator: AND

How would you carry out a search

for inventions related to blood
pressure?

blood AND pressure

€ No context

Photo source: Pia von Lützau

 Proximity operator

How would you carry out a search for

inventions related to blood pressure?

blood AND pressure

No context

blood BEFORE1 pressure

Works, but not supported by all database
systems

Photo source: Pia von Lützau

 Phrases
How would you carry out a search for
inventions related to blood pressure?

blood AND pressure

€ No context

blood BEFORE1 pressure

€ Works, but not supported by all
database systems

€ "blood pressure"

Photo source: Pia von Lützau

Comparison: AND, proximity, phrases

AND: both terms required, no context required

€ Broadest search

Proximity: both terms required, in context

€ Narrower search (depending on distance)

Phrases: exact phrase required (e.g. compound words)

€ Narrowest search
 Nesting: Rationale

apples AND oranges OR bananas

 Nesting: Rationale

apples AND oranges OR bananas

or
?

Photo source: Evan Amos, Zoofari, Amada44 (Wikimedia)

 Nesting: Rationale

apples AND oranges OR bananas

or
?

Photo source: Evan Amos, Zoofari, Amada44 (Wikimedia)

 Nesting: Rationale

apples AND oranges OR bananas

or
?
or
?
Photo source: Evan Amos, Zoofari, Amada44 (Wikimedia)
 Nesting

(apples AND oranges) OR bananas

or

apples AND (oranges OR

bananas)

or
Photo source: Evan Amos, Zoofari, Amada44 (Wikimedia)
 Question

How would you carry out

a search for all manner
of inventions related to
electricity?

Photo source: Dmitri G (Wikimedia)

 Key concepts

electricity
electrical electric
electronic
electromagnetic
…
 Boolean operators: OR

electricity electrical electric

electronic electromagnetic
…

electricity OR electrical OR electric OR electronic OR

electromagnetic …
 Wildcard operators

electricity
electrical electric
electronic
electromagnetic
…
 Wildcard operators

electricity
electrical electric
electronic
electromagnetic
…
 Wildcard operators

electricity electrical
electric electronic
electromagnetic
…

€ electr*

( * represents a given number

of characters)
 Wildcard operators

Any number of characters : *

electr* electric, electron, electronic …

One character exactly (stackable) : ? coll?

sion collision, collusion … foc?? focus,
focal …

Can be used at the end of a term or inside a

term
Practice Exercises
 Scenario

A shipping company would like to improve its logistics

management.

You've been asked to perform a search for inventions related to

radio frequency identification (RFID) tags used to track the
movement of containers.
 Key concepts

radio frequency identification RFID containers

 Phrases

"radio frequency identification" RFID containers

€ Identify compound Words

 Boolean operators

"radio frequency identification" OR RFID AND containers

€ Indicate relationships between concepts (synonyms and additional concepts)

 Nesting

("radio frequency identification" OR RFID) AND containers

€ Resolve ambiguous logic

 Wildcard operators

("radio frequency identification" OR RFID) AND container*

€ Include variants (here: plural form

Search
Search
Search
Search: Results
Search: Results
Search: Results
 Search Activity 1

 Assume you are a manager of a branch of a company whose

business involves solar and wind powered electric generators. Here
you might want to do a State-of-the-Art patent search using the
words solar, power, electric and generators and then another search
replacing the word ‘solar’ with ‘wind’. If you want to locate the most
suitable technology and its availability through licensing or
technology transfer, you would benefit from doing this type of
search to find relevant patent documents, and then checking
whether or not there are patents in force in the territory in which
you intend to operate.
 Insert the phrase ‘solar AND power AND electric AND generators’
into the second box down in Espacenet
Thank You for your
patience

Muhammad Arshad
Manager - ORIC
Focal Person - TISC
MS-Electrical Engineering
[email protected]
[email protected]
Office: 051-9075594
Cell: 0345 0518641/0320 9221073
 Using patent Information in
corporate strategy
 For example, an investor could examine a company’s strength based
on its patents in a specific technology and decide or decline to invest
in long term shares in that company. Market information on
technology trends and the decisions made by R&D investment
companies can be gleaned through a patent information search.
Names of individual inventors can be important information for
competitors who wish to attract and hire talent in order to compete.
 patents have become an important element in merger and acquisition
due diligence investigations, and patent information searches are
often used to assess the value of the patent portfolio of an
investment or acquisition target.
 Territoriality and the use of
patent information
 “As patents have a strictly territorial effect, industries in these
countries could take the information out of patents as disclosed at
foreign patent offices and use it freely as these technologies were not
patented in their own territories”
Case study 1: Licensing
agreement
 Pfizer module 1
Case study 2

 Indian drug manufacturer

Case study 3:

 IG Kogyo Co., Ltd., boasts the top domestic share in metal siding
(heat insulating metal material for home exterior walls), and
Case study 4: Using patent information
to solve a technical problem
 Malaysia based Rica Industries was a typical SME having less than 150 workers
and an annual turnover of less than USD 8 million
Muhammad Arshad
Manager - ORIC
Focal Person - TISC
MS-Electrical Engineering
[email protected]
[email protected]
Office: 051-9075594
Cell: 0345 0518641
 TISC-IST Structure

 Prof. Dr. Zaffar M. Khan (Head ORIC)

 Dr. Zahoor Sarwar(Consultant TISC)

 Mr. Muhammad Arshad(Manager TISC)

 Mr. Iftikhar Ahmad (JA-Supporting Staff)

 TISC Services at IST

Scientific Databases
Patent Databases

PATENTSCOPE
 Awareness Seminars on IPRs

01-11-2017
Session on “Patent 08-11-2017 18-04-2018
Drafting, Filing and Awareness Session on Session on “Role of IPR in
Prosecution” IPR Commercialization of
For Research Student of IST For Research Student of IST Research “
 Innovation Wall at IST

Institute of Space Technology (IST) has provided a platform for students and researchers to
share their innovative ideas with fellow researchers by establishing an Innovation Wall.
Innovation wall promotes the significant contributions of students, researchers and inventors,
and to foster and motivate researchers and students to unleash their innovative ideas.
 TISC-IST Operational Structure

 Step 1: IP is created, generated, developed or conceptualized, Notify TISC

Office

 Step 2: Fill and submit Invention Disclosure Form to TISC within 30 days of
knowledge about such an invention, conception of idea or Intellectual Property.

 Step 3: Online patent database searching for prior art and detailed discussion of
TISC representatives with Inventor(s)

 Step 4. Decision to file an IP or otherwise

Contd…
 TISC-IST Operational Structure, Contd…

 Step 5. The inventor, with the assistance of IST-TISC, will file a

Patent (Provisional or Complete).

 IST-TISC will assist in Patent Prosecution till Patent is granted.

 Contact IST-TISC

Postal Address:

TISC office, ORIC Block VI. Institute of Space Technology.

1 Islamabad Highway. Islamabad
Tel: 051-9075594,9075663
Questions?