[MUSIC] Welcome to the second lecture on document types in the patenting fine process. We have already discussed US Public PAIR you know now how to follow the examination in the US system and now we are going to look into a slightly more complicated case in the European patent register, which serves essentially the same purpose in the EP and the PCC system. You should get the hang of drawing patent trees, that's covered in Chapter 4 of the textbook, and you should learn to determine status. What are patent trees? Well, the timelines that you have seen, so far, are precisely that, lines. Just a linear progression through the different stages of the hiring process. But when you begin making international applications that branch out in different regions and countries, then the timeline is not as uncomplicated as that. Then they develop into what we call patent trees. And the tools it allows you determine status, just like you saw in the public period, where we could check whether the applicant actually paid their fees so that the patent was enforced. Okay, I will now try to draw a simple patent tree that has the generic features that we expect every pattern tree to have when we're filling an actual pattern family. So we will start with at a time 0, that is when we submit the very first priority application. And then after one year, here we have the international filing. And here we have priority application number one. We now assume that the international filing is a PCT application. And if that is the case, then at months number 18, the PCT spits out a publication with your application inside. And it carries the WO, for WIPO, and as a prefix to the number. Then, after a certain point in time, we get to month 30 or 31. It is very important to figure out whether the region of the countries that you enter at this point in time uses the 30 or 31 month deadline because there's no forgiveness if you don't honor this deadline, you're dead. So now, you can go into the regional phase, that could be the EP system, the European system, that's yet another system. Which keeps an application together before it branches out to different countries. Now the prosecution in the EP and the prosecution in the PCP system takes place in the same building and it's very tightly linked. So if you come out here with an application that gets published by the EP system, it will then have the prefix EP and it would have the suffix A. But if this is unchanged from this one the publication will be identical to this one. Don't be confused when you ask for the publication from an EP application and you get the PCT document. Then time passes and maybe you are lucky, and you get an issued EP patent and that it will carry the B1 suffix. At this point in time, you can take this and go to national offices and then, have it issued as a national patent. Remain national for a while, still. Read in the textbook about the plans for a European unitary patent. And, but that's not in existence yet. So here, you go into the UK or you go into France or you go into Sweden. Could you have gone into Sweden here? Certainly yes, if you had a reason to. You begin the national phase quicker if you do any such thing because you start the phase at the national level earlier, thereby using the mechanism for waiting for as long as you can. Now there are countries, PCC countries many PCC countries that are not European. So you could go to the US, here. That's a PCC country. You could go to Australia another PCC country. Here and have each their own prosecutions at this point in time. Now, the P1 here could be a US application, it could even be a US provisional application that's perfectly all right, it doesn't matter. And, when you do your international filing, it does not have to be. Many offices around the world that are qualified to handle international findings. Sometimes you will see that the US will branch out earlier. That is usually for strategic reasons. And at yet other times, you will see that the US is run in parallel starting right from the provisional application. Why is that? That is because in the US, they have a sentence in the law talking about first filed in this country. So it's perhaps a bit old fashioned way of playing it safe, that you actually begin in the US filing and prosecution right from the beginning. So this is, in essence, what a patent tree could look like. There are many variations to it. Nobody forces you to use the PCT system for the international finding. You could use the EP system directly here at month 12. And many other variations are there to be seen. And then, so I think we from here on, should try to look at some real world examples. The generic patent trees is only the model. They get a lot more complicated when we put real patent families Into the patent tree. As you can see in this example, this is taken from a student report from the in-class version of this course, you can see that, in some cases, The students have been able to determine status on the various documents and other cases. Probably for language reasons they have not been able to do so. So what does make a patent family that you can fit into one tree? Well the documents there must have at least one priority application in common. You know already that any given patent application can claim more than one priority application. And you can then see that the printing pattern can be quite complicated if there are several priority applications and the shared one is not the same for all pairs of applications in the patent tree. Now, why are we concerned with this exercise of drawing patent trees? Well, it’s a tool to judge the strategic importance of a patent family for your competitor. And that is because it’s quite inexpensive to run your patent application through the PCT system. It’s the whole philosophy to keep it simple, and inexpensive, and keeping all the documents together until you enter regional and national phase, and then it becomes expensive. So, if a company is actually paying fees in several countries to maintain their patent, it's probably a patent that they use or intend to use, and they will be very sensitive to infringement and will come after you if you try to do something that is dominated by them. And now I will go to the computer and make a sample in the European Patent Register for you to see. This time, I think that we should use a synthetic, small molecule croc as the example. I've selected a patent from the Swedish company Astrazeneca. And in a moment, we will have looked it up in Derwent Innovation Index. And here it is, New indolyl-dihydro etc. These are a class of protein kinase C inhibitors that apparently are useful for treating inflammatory or immunological disorders. You can see, and you've been seeing that all the time, probably, that list a number of different patent documents for every record. Yes, you have guessed this is actually the patent family that we are seeing there. And this is in the claim formula. Just like when you try to claim nucleotide protein sequences you want to generalize them so that the small variations is not a way of escaping the scope of your patent. And likewise for small molecules, here you will often use variables and aerial wing there. Then, four different variables that can take particular values. But right now we're concerned with the beginning of the patent tree and that's the priority applications. And you'll see them down here, two Swedish documents from 1997 and 1998. Let us now see what kind of information we can read from the front page of the PCT publication. And here it is. I want you to note this number ending in 2300, we will need that in a moment. But right now, see here that the two priority documents are sited on the front page. And look at the number format of the WO publication here with a slash. That does not work in any of the databases, but that's how it appear on the front page. And then there is the abstract. Here you see a so-called Makoosh formula. And in the abstract, you can see that some of these variables are defined. So that we can know what they, which values they can take and how broad a class of molecules this could cover. And the formula as such should also be in the patent text itself and indeed here it is. After search for such formula, here is a topic of a future sci find video. But now you will be concerned with our patentry. Here is our timeline with some of the standards most indicated. We will add an extra tick mark because we have two part documents. And here they are. Now, it's time to go to the UP patent registry and see what more we can learn. And you will not be surprised to learn that we will find a link to the patent register here in the companion website. And you will also not be surprised that we can search for the PCC publication as long as we omit the slash from the front page. And here it is. No opposition find within the time limit is the status in the PCC phase. Now to the left you can see a menu with the various tools that the European Patent Register offers, legal status, event history and patent family which is the one that we interested in right now. We will scroll to the bottom to first take a look at the PC document. There it is with a time code of A1, something that we will look into it in the next lecture. And then when you begin looking at the various national documents, you will notice that there are actually three priority documents cited. It goes for the Japanese one here, and also for the European filing that you see there. And now notice that the top one of the priority documents actually carries this 2300 number. So it is, in fact, the international filing itself, it's the Swedish number for that. So that's the explanation why all the other documents aside three and the PCT itself only the size two. Now, let us put that information into our patent tree. Here's the PCT with its record from the patent register with the own two for the documents. But now we can add the number of the third one, which is identical to the international filing. And then we can extend the timeline to where the PCT phase ends at 130, 31 a deadline that you would not want to miss because there is no way back. In October, year 2000, a European application is accomplished. And then in 2003, a European patent is issued. No date has yet been indicated for the entry into the EP. They're around 130 or 31 and The date is not shown in the patent register record down here, as you can see. So, we could take a look at the front page of the issued patent and see if there's any hope there. So we will briefly return to innovation intakes to get the original document. Here it is, European Patent Specification. As always, the document type is clearly spelled out. You can see the two priority documents here next to the 30 label. Up here, we can see the 3300 number cited. We can see the PCT publication cited. And we can see the filing date which is the international filing date, not the EP filing date. And this is the important one because that's from when the 20 years are counted. So, there was no help there. But if we go back to the about this file and we scroll down, lo and behold, here it is, entry into regional phase, July 24, year 2000. That was when it happened, and the various fees have been paid back then. So now we can put that date into our patent tree. There it is. And now, it's time to look at the national phase that follows the regional phase in Europe. So, we have to skip the beginning because of space constraints. And here we can see a German document that carries the type code T, that means translation. And then we could also see that a number of countries were allowed to lapse during the prosecution. But we couldn't find anything about Sweden. It was neither a patent or did it lapse. But here, underneath legal status we have all the individual designated countries, and you can see the various states when they lapsed from any of them, but nothing for Sweden. But there is a link directly to the Swedish patent website, and there it says that the status is that the patent is no longer in force. And you can see there the T3, that there was a patent and that it was paid for for 11 years. And then, there is the international phase with a number of countries. And, interestingly, there is a use patent. You can see that from the B1 code, and you know already how to look in, use public pair to see if they pay the fees for that, so that is still active. Okay, you have developed a small molecule drug and you performed a direct search on the chemical structure of your molecule on SciFinder. You don't know how to do that yet, that's a subject of a future lecture. But it allows you to determine that your molecule, indeed, is within the scope of this generic formula of the AstraZeneca patent. So, now what are your options and possibilities and limitations? I assume now that you have been into US Public Pair and you have found out that the issued US patent is, for example, not enforced, just like all the other documents that we have seen in this patent family. Well, it's still. You cannot hope to get a product claim on your new molecule but maybe a second medical use claim. What is that? Well, the name says it all. It is a used claim on the molecule for a medical indication that is novel. It has to be novel and it cannot be protein kinase inhibitor, your molecule that cannot be the mode of action because then it's not inventive because that's already written out in the AstraZeneca patent. But, under these conditions, then it is possible for you to obtain a patent on your particular use. A much narrower patent than the one that AstraZeneca hoped to get, or actually got in some countries, but it could still be useful. And no matter what, if you cannot get a patent, nobody will prevent you from pursuing the use of your molecule because it's not dominated by the AstraZeneca patent anymore. I hope I have argued that growing patentries, they don't need to be pretty. They can, this is another student generated three from the in class version of this course. They could be on the back side of the envelope, but they are very useful analysis of your competitor's patent to figure out how much space do they take up in the patent landscape around your invention, and henceforth, this is an important aspect of a freedom to operate analysis to figure out what your competitors are doing, where they are active, and where they have been active but give it up, for example. [MUSIC]
