Derwent Innovation Blueprint for Success

Ensure Freedom to Operate for a New Invention Does our new invention infringe on any active (enforceable) patents? Can we commercialize our new invention in specific markets? How do we anticipate new infringement risks related to the invention?

Freedom to operate (FTO) research helps you determine if you can take action around an invention – such as testing or commercialization – without infringing on the intellectual property rights of others. The scope of this research is narrower than patentability research, but requires greater depth due to the larger potential impact of mistakes.

Derwent Innovation makes it easy to perform comprehensive FTO research before you bring an invention to the market. Powerful search tools and our advanced Predictive Data yield to precise, comprehensive results that clearly identify active patents. These same tools make it easy to evaluate pending applications for potential risks and receive notifications as those applications progress through the patent lifecycle.

Research key terms and classification codes related to your invention Find patents relevant to your invention

Smart Search makes it easy to start with simple words or phrases to find patents relevant to your invention. The relevant patents retrieved can help you identify key terms and classification codes to use in a more focused search. 1. From the Derwent Innovation Dashboard, enter key

terms about your invention in the Smart Search box

2. Click to find patents related to your key terms Smart Search automatically expands the terms to find all relevant patents; you do not need operators or a comprehensive list of terms. You can also enter text that describes your invention, e.g., patent claims, and Smart Search automatically extracts key terms.

Identify key terms and classification codes with text clusters

Text clusters group records in your results based on common text in selected fields. 1. Click Analyze, Text Clustering 2. Select Claims fields in all available languages 3. Click Create The text clusters from your results display on the left. • Review clusters for potential key terms, including

terms in non-English languages • Select clusters highly relevant to your invention to

review DWPI Title for additional key terms • Review Current IPC and Current CPC for records in the

most relevant clusters to identify highly relevant classification codes

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Find active patents with claims relevant to your invention

Start with claims related to your invention

1. From the Dashboard, click the Patents tile 2. Click Change collections to confirm you selected all

desired jurisdictions, and click OK 3. Select the Claims field from the dropdown menu 4. Enter the terms (in all languages) you discovered in

text clusters that broadly describe your invention

Tip: Expert searchers can use advanced operators like NEAR for additional precision in claims research.

Ensure comprehensive results with classification codes

Classification codes broaden your search to include relevant patents, even if those do not use your initial key terms: 1. Click the plus sign twice to add two new fields; use OR

between the Claims field and each new field 2. Select CPC-Any and IPC-Any for the new fields 3. Enter relevant classification codes that you identified

in your text cluster analysis

Tip: Derwent Innovation automatically adds the OR operator between codes in classification search fields, which finds patent records with any of those terms. Manually use the AND operator between codes to find patent records that have all the codes linked by AND.

Focus on patents that may still be in force

Priority date helps limit your research to patents that should still be in force (approximately 20 years): 1. Click the plus sign to add a new field and make sure

the AND operator displays between fields 2. Click the new field and select Priority Dates(s) 3. Enter a date about 20 years in the past Tip: Remember to add some extra time to account for patent term extensions and patent term adjustments.

Note: When you use a mix of AND and OR operators in your search, make sure to edit the query in the Preview/edit query box to add parentheses around all the fields you want connected by OR. This is especially important when you want to apply a date field to the entire search.

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Run an initial search and optionally narrow results

1. Click Search to run the query and view your results and review the number of results found

2. If the search found a manageable number of results, focus your results on active, in force patents; otherwise, further narrow your results

3. Click the plus sign and add an additional Claims field to your search, connected with the AND operator

4. Enter unique aspects of your invention, such as key terms, and click Search

5. Continue to refine your results until you have a manageable result set

Note: Remember to re-add parentheses around fields connected by OR when you add new fields

Focus your results on active, in force granted patents in your desired markets

The Results Dashboard and predictive data help you focus your results on active, granted patents that still have life remaining in their patent term in your desired markets.

• Grants/Apps focuses your results on granted patents, not pending applications

• Use Dead/Alive to focus on patents currently in force (Alive) or patents without information for accurate predictions (Indeterminate)

• Country Code helps you focus on specific markets for your invention

• Click Filter Results after your select the appropriate statuses, patent types, and markets to focus your research on your selections

Tip: Review Estimated Remaining Life to make sure no patents in your filtered results have 0 days remaining (that is, make sure they are all within their terms). For Indeterminate patents, review Estimated Expiration Date to establish how likely the patent is to be in force; granted patents that have not passed their expiration date are likely to be in force.

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Review individual patents for infringement risk

Review key summary data to identify records for further review

Click the hyperlinked publication number for the first record in your results list to open the record view to see full details about the patent. Key Summary information helps you quickly identify records for review:

• Key Summary Data provides basic information about the patent and predictive data about the patent’s status (Dead or Alive), estimated expiration, and remaining life

• The View Factors link provides details about the legal status events that predict the expiration date

• DWPI Title highlights the content and novelty of the invention in concise, descriptive, English-language text; use this information to quickly ascertain the relevance of the patent to your invention

• The Legal Status link provides one-click access to full details about all legal status events on the patent, which helps validate the patent status and expiration date information above

Claims and drawings help determine infringement risk

• Click Claims to jump to full details about the inventions claimed in each patent

• Use the Highlighting tab to easily find key terms in the claims (e.g., specific aspects of your invention); you may need to enable this tab in your Preferences

• Review drawings on the Images tab to look for technologies similar to your invention

• For records of interest, click to open a copy of that record in a new window to compare drawings and claims side-by-side

• Click Mark Record to quickly add records of particular interest to your Marked List for deeper review

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Export data to perform offline, in-depth analysis

Derwent Innovation lets you export data in numerous formats, including Excel, to perform automated analysis offline that you can share with colleagues or clients.

• Click Exports on your result set and select Excel as the export format

• Move fields to support your analysis from the Available list to the Export Field list

• Claim information and counts help you evaluate similarity and relevance to your invention

• Bibliographic legal status information, including dead/alive status and expiration date, helps you determine which patents are enforceable

• Links to the drawing overview and original PDFs/images help evaluate patent relevance

Note: Derwent Innovation provides the best possible data about the patent, including highly accurate predictions about patent status and expiration dates. However, you should always refer to the patent issuing authority for the most recent, complete legal status data.

Investigate new and pending developments in the field

Receive notifications when new patents that match your search are published

Alerts automatically rerun your query at set intervals and notify you when your search finds new results so you can keep up-to-date with new published patents that may affect your freedom to operate. 1. Click Alerts on your result set 2. Enter a Name for the alert and click Run Options 3. Select the Frequency for how often you want to

receive alerts (e.g., weekly) 4. Select Save results for only the latest results to a work

file or optionally accumulate all results 5. Click Delivery & Content Options to choose the format

and contents of your notifications, then click Save Your alert will run at the specified frequency and send notifications when it finds new, matching records.

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Locate pending applications relevant to your invention

Pending applications provide a warning of future patents where your invention may infringe. You can easily update your original search to find those patent applications. 1. Scroll up to the search form above your results 2. Make sure you have all collections selected, including

DWPI (if you have access) 3. Change your Claims fields to Title/Abstract/Claims to

ensure more complete coverage, as your key terms may not yet be present in the claims

4. Add any necessary parentheses in the Preview/edit query box and click Search

5. On the Results Dashboard, select Grants/Apps and focus your results on Applications

6. Use the Country Code field to refocus your results on your intended markets

7. Click Filter Results to focus your on applications in found by your expanded search in selected markets

Tip: You can use the Combine tool in search history to find granted patents missed by your initial search. Compare your new search to your initial search with the NOT operator, then use the Grants/Apps filter on the results to focus on Grants found in your new search that were not present in the initial search.

DWPI helps ensure comprehensive application research

Claims on patent applications may not contain the key terms in your search. Claims may change during prosecution, the patent author may use different or obfuscated terms, or documents may be published in languages not accounted for with your key terms.

The DWPI editorial team rewrites patent titles and abstracts in English with industry-standard terminology. Additionally, subject matter experts apply DWPI Manual Codes, a unique classification scheme that benefits from the same consistency and editorial review.

When you research applications, make sure you include DWPI information to ensure the most comprehensive result list possible. You may also want to add DWPI manual codes to ensure your classification research includes the most accurate, relevant classification codes applied consistently to each invention by subject matter experts.

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Review patent applications and watch applications that pose potential risks

Analyze the patent applications for potential infringement risks with the same methods used to analyze granted patents. If you find a potential risk, you can receive notifications about further developments to the patent. 1. Click the Watch Record link 2. Select New Publication Stages to receive notifications

when the application enters a new stage 3. For WIPO patents, also select INPAODC and DWPI

Family Changes to receive notifications if the applicant files an application in other countries of interest

4. Click Save; you will receive notifications when any of the selected events affect the patent application

5. Continue to review patent applications and watch for any additional potential risks

Tip: The Key Summary Data panel of patent applications will provide a link to the granted patent when available. If you see this link, skip your review of the application, as you likely previously reviewed the granted patent.

Learn more with these additional resources • Research patents in a specific technology domain

• Keep aware of changes in your patent field

• Tips & Tricks: Compare multiple records

• Tips & Tricks: Watched record notifications

• Tips & Tricks: How to get the most out of the highlighting function

• Tips & Tricks: Advanced exporting tips

• Tips & Tricks: Using the query previewer for combining fields using the “OR” operator