Exploring the Challenges Faced by Examination Phase of Intellectual Property (IP) Life Cycle: A Pilot Study

This pilot study delves into challenges during the 'Examination' phase of the Intellectual Property (IP) life cycle, focusing on complexities in IP search. By addressing limitations in existing databases and the dynamic nature of technology, the study aims to comprehend their impact on decision-making. Employing qualitative interviews and developmental research over 16 weeks, the study identifies challenges, explores their specific aspects, and establishes a foundation for future research. Innovators underscore the crucial role of IP search in grant timelines, commercial use, and protection, emphasizing challenges in terminology and databases. Legally, IP search challenges impact accuracy, validity, and infringement risks, necessitating engagement with legal professionals and advanced tools for compliance and precision. Private companies perceive IP search challenges as pivotal for operations, requiring advanced technologies and engagement with IP experts. IP service providers face challenges in data complexity, terminology, and cross-jurisdictional differences, investing in research and advanced tools for accurate search services. Government offices see IP search challenges as vital for promoting innovation, focusing on patent quality and supporting domestic industries. Educators encounter challenges impacting information access, emphasizing collaboration and specialized tools for teaching enhancement. Respondents in the pilot study highlight challenges in readability, articulation, and translation during IP search examination. Process standardization issues and participants' knowledge levels in legal and technical aspects are crucial considerations. Limitations in existing tools and significant efforts throughout the IP life cycle are also emphasized. Findings suggest a need for improvements in language, standardization, legal knowledge, software functionality, and educational approaches to comprehensively address IP search challenges.


INTRODUCTION
The purpose of the pilot study titled "Exploring the challenges faced by 'Examination' phase of Intellectual Property (IP) life cycle -A Pilot Study" is to establish an initial understanding of the challenges faced during the process of conducting intellectual property search.The study aims to identify and categorize these challenges as a foundation for further research and the development of strategies and tools to enhance the efficiency and effectiveness of intellectual property search activities.By exploring the challenges faced

3.2.Developmental research by proposing a model for adoption a)
The model conceptualizing portion of the study shall involve assessment of technology led capabilities, alternatives, and applicability.The scope of the pilot study under consideration is restricted to 1 st phase of qualitative studies for data collection through surveys and correlation.A purposive sampling technique is used to select participants with expertise and exposure in intellectual property search.Participants included innovators, government officials, patent lawyers, intellectual property service, and professionals working in IP-related roles.Initial sample size will be 2 individuals from each category of roles and further be determined based on data saturation, where new information and insights cease to emerge.Participants who do not have direct involvement in intellectual property search activities or lack the required expertise may be excluded from the study.The selection of participants is be based on careful consideration of their qualifications and experiences related to intellectual property search.The aim is to ensure that the sample includes individuals with diverse backgrounds and varying levels of experience to capture a wide range of perspectives on the challenges faced in the field.The pilot study has a limited sample size, which may affect the generalizability of the findings.The focus on qualitative data may limit the ability to quantify the prevalence of specific challenges.The study's scope is exploratory and may not encompass all possible challenges faced in intellectual property search.The set of questions deliberated and identified for administering the interviews and data collections are -1) What are the main challenges encountered during the process of intellectual property search?2) How do you perceive the complexity of search queries and their impact on search outcomes?3) What limitations and shortcomings exist in the currently available intellectual property search databases?4) What are the key difficulties associated with the interpretation and analysis of search results?5) How do the challenges in intellectual property search impact decision-making in intellectual property-related activities? 6) What potential strategies and tools can be developed to address the identified challenges and enhance the efficiency of intellectual property search?7) What are the potential stages where next generation technologies such as AI can be useful in accelerating the patent search process?

PILOT STUDY PROCEDURE
The objective of conducting pilot study with a methodical and systematic procedure is to gain valuable insights into the challenges faced during the examination phase of the IP life cycle and lay the groundwork for a comprehensive and impactful larger-scale study.

4.1.Pilot Study life-cycle
Following is the life-cycle involved in the pilot study with a commentary on activities conducted in the context of the subject under pilot study.

4.2.Pilot Study Timeline
The pilot study lasted over 16 weeks of duration with following general outline of the timeline, including the data collection and analysis periods.The timeline considered various factors such as the number of participants, availability of resources, and the complexity of the data analysis.
It was important to allocate sufficient time for each stage of the study to ensure rigorous data collection, analysis, and reporting.Flexibility was also maintained in the timeline to accommodate any unforeseen challenges or delays that may arise during the research process.

4.3.Provision for modifications and refinement
During the pilot study, modifications to the research protocol was necessary to improve the study's efficiency, address unforeseen challenges, or enhance the quality of the data.The modifications made during the pilot study could include:  For innovators, prior art search is of a significant importance as it has direct implications on grant timelines, commercial use and protection.Following is the summary of innovator's feedback on the questionnaire on intellectual property search related challenges -1.
Identifying Existing IP: Conducting a comprehensive IP search helps innovators identify existing, relevant, and most appropriate innovation with legal protection.IP search challenges, such as complex terminology and inconsistent databases, makes it difficult for innovators to analyse and study existing innovations from prior art universe.Innovators believe that overcoming these challenges is crucial for ensuring that they are aware of existing IP and can avoid legal challenges in future.

2.
Assessing Novelty and Patentability: Innovators rely on IP search to assess the novelty and patentability of their inventions.Failure to identify prior art or relevant patents during the search process can lead to wasted resources and potential legal disputes.Addressing search challenges enables innovators to conduct a thorough analysis of existing IP, evaluate the patentability of their innovations, and make informed decisions about pursuing patent protection.

3.
Supporting R&D and Innovation Strategy: IP search is instrumental in shaping an innovator's research and development (R&D) efforts and innovation strategy.It helps identify gaps in the existing IP landscape, uncover emerging technologies, and inspire new ideas.Overcoming search challenges allows innovators to explore untapped opportunities, align their R&D efforts with market needs, and make strategic decisions about product development and commercialization.

4.
Avoiding Infringement and Legal Risks: IP search helps innovators identify potential infringement risks and design around existing IP rights.Failure to identify relevant patents or trademarks during the search process can lead to unintentional infringement and costly legal disputes.Overcoming search challenges ensures that innovators can navigate the IP landscape effectively, minimize infringement risks, and protect their innovations.

5.
Enabling Collaboration and Licensing Opportunities: IP search assists innovators in identifying potential collaboration partners and licensing opportunities.It helps them discover complementary technologies, assess the licensing landscape, and explore avenues for technology transfer.Addressing search challenges facilitates effective networking and collaboration, opening doors to partnerships that can accelerate innovation and commercialization efforts.

6.
Strategic Market Entry and Competitive Intelligence: IP search provides valuable insights into competitors' IP portfolios and market trends.It helps innovators understand their competitive landscape, identify white spaces for innovation, and make informed decisions about market entry.Overcoming search challenges allows innovators to gather competitive intelligence, assess market opportunities, and position their innovations effectively.
Innovators rely on comprehensive and accurate IP search to inform their decision-making, protect their intellectual property, and navigate the complex landscape of existing IP rights.Overcoming search challenges is crucial for supporting their innovation process, minimizing legal risks, and maximizing the value of their intellectual property assets.

Legal Professional's Response summary
Following is the summary of responses received from the legal professionals - Validity and Enforceability: The accuracy and comprehensiveness of IP search results are crucial for assessing the validity and enforceability of IP rights.Failure to identify relevant prior art during the search process can weaken the validity of a granted patent or trademark.Inadequate search efforts may also result in overlooking existing IP rights that could potentially infringe upon new inventions or trademarks.

2.
Infringement Risk: Conducting a thorough IP search helps identify existing IP rights and potential infringement risks.If an inventor or business fails to identify existing patents, trademarks, or copyrights that are similar or identical to their own invention or mark, they may unintentionally infringe upon someone else's IP rights.This can lead to legal disputes and potential liability for infringement.

3.
Clearance and Freedom to Operate: IP search challenges can hinder an individual or company's ability to determine freedom to operate in a particular market.An inadequate or incomplete search may result in the failure to identify existing patents or trademarks that could restrict or block the use, production, or sale of a product or service.This can expose businesses to the risk of infringement claims and associated legal consequences.

4.
Licensing and Due Diligence: Thorough IP search is essential during licensing negotiations or due diligence processes.Inaccurate or incomplete search results can impact licensing agreements, valuation assessments, and investment decisions.Failing to identify existing IP rights or uncovering hidden prior art may lead to potential licensing disputes or undervaluation of IP assets.

5.
International Considerations: IP search challenges are often magnified when dealing with international IP rights.Searching prior art and assessing the uniqueness of an invention or the availability of a trademark across multiple jurisdictions can be complex.Language barriers, differences in legal systems, and variations in patent or trademark databases pose additional challenges for conducting comprehensive international IP searches.
To address these legal considerations, it is crucial to engage legal professionals, such as patent attorneys, trademark attorneys, or IP specialists, who possess the necessary expertise and experience in conducting thorough IP searches.They can navigate the legal intricacies, understand the implications of search challenges, and provide guidance to ensure compliance with IP laws and regulations.Collaboration between legal experts and technologically advanced search tools can enhance the effectiveness and accuracy of IP searches while minimizing legal risks.

IP CoE (Private Sector) Professional's Response
Following is the summary of responses received from the IP CoE (Private Sector) Professional Freedom to Operate: Private companies conduct IP searches to assess the freedom to operate in a particular market.IP search challenges, such as complex patent language and multiple jurisdictions, can make it difficult to identify existing patents and trademarks that may restrict their operations.Overcoming these challenges enables companies to navigate the IP landscape, avoid infringement risks, and make informed decisions about introducing new products or services.

2.
Innovation and R&D Strategy: IP search plays a crucial role in shaping a company's innovation and research and development (R&D) strategy.It helps companies identify existing patents and technologies, assess the competitive landscape, and uncover white spaces for innovation.Addressing search challenges enables companies to gain insights, focus their R&D efforts effectively, and develop innovative products or technologies that differentiate them in the market.

3.
Intellectual Property Protection: IP search is essential for companies to protect their intellectual property.It helps identify prior art, assess the novelty of inventions, and determine patentability.IP search challenges, such as hidden prior art or inconsistent terminology, can impact the strength and enforceability of a company's IP rights.Overcoming these challenges ensures that companies can adequately protect their innovations, obtain valuable patents, and safeguard their competitive advantage.

4.
Licensing and Technology Partnerships: IP search assists companies in identifying potential licensing opportunities and technology partnerships.It helps them discover complementary technologies, assess licensing landscapes, and negotiate favorable agreements.Search challenges, such as fragmented patent databases or language barriers, can hinder the identification of suitable licensing partners.Overcoming these challenges enables companies to leverage their IP assets effectively, generate additional revenue streams, and forge strategic collaborations.

5.
Market and Competitive Intelligence: IP search provides valuable insights into competitors' IP portfolios, market trends, and emerging technologies.It helps companies understand the competitive landscape, identify potential threats, and make informed decisions about product positioning and market entry.Addressing search challenges allows companies to gather competitive intelligence, monitor industry developments, and stay ahead of the competition.

6.
Mergers and Acquisitions: IP search plays a critical role in due diligence processes during mergers and acquisitions.It helps identify IP risks, assess the strength of IP assets, and evaluate potential synergies.Overcoming search challenges ensures that companies can conduct thorough IP due diligence, make informed investment decisions, and mitigate the risk of acquiring IP assets with potential conflicts or weaknesses.
For private companies, addressing IP search challenges is essential for informed decision-making, mitigating legal risks, protecting intellectual property, and staying competitive in the market.Leveraging advanced search technologies, engaging IP experts, and utilizing comprehensive databases can help private companies overcome these challenges and maximize the value of their intellectual property assets.

IP Service Provider
Following is the summary of responses received from the IP service Provider Professional From the perspective of IP service providers, who offer specialized services related to intellectual property, there are several challenges they face in the intellectual property search process.Here are some key challenges: 1.
Complex and Vast Data: The sheer volume of patent and trademark data available makes it challenging to efficiently search and analyze relevant information.IP service providers need to navigate through extensive databases, multiple jurisdictions, and various languages, which can be time-consuming and resource-intensive.

2.
Inconsistent Terminology: Inconsistent terminology used in patent and trademark documents presents a significant challenge.Different inventors and applicants may use different words or phrases to describe similar technologies or inventions.This inconsistency can lead to difficulties in conducting comprehensive searches and may result in relevant prior art being missed.

3.
Hidden or Unavailable Information: Certain relevant information, such as unpublished patent applications or non-public trademarks, may not be readily accessible through public databases.IP service providers need to explore alternative sources, such as industry-specific databases, non-patent literature, or specialized search tools, to uncover this hidden information.

4.
Rapidly Evolving Technologies: Keeping up with the latest developments in technology and industry sectors is crucial for conducting effective IP searches.However, emerging technologies and rapidly evolving industries pose challenges, as the relevant prior art may not yet be well-documented or easily searchable.IP service providers need to employ specialized strategies and expertise to overcome this challenge.

5.
Cross-Jurisdictional Differences: Intellectual property laws and practices vary across jurisdictions, which can complicate the search process.IP service providers must have a deep understanding of the different legal frameworks and databases of various countries to conduct accurate and comprehensive searches.Harmonizing search techniques and accessing reliable global patent databases can help address this challenge.

6.
Quality and Accuracy of Search Results: Ensuring the quality and accuracy of search results is essential for IP service providers.The risk of missing relevant prior art or providing incomplete search reports can have significant consequences for their clients.Striving for high-quality search results requires continuous training, expertise in search techniques, and access to reliable and up-to-date databases.

7.
Technological Tools and Expertise: IP service providers need to invest in advanced technological tools and expertise to effectively address search challenges.This includes adopting artificial intelligence, machine learning, and natural language processing technologies to enhance search capabilities, automate certain aspects of the search process, and improve the accuracy and efficiency of the search results.
To tackle these challenges, IP service providers continuously invest in research and development, collaborate with technology providers, and employ skilled professionals who possess expertise in intellectual property law, search methodologies, and database navigation.They also engage in ongoing professional development and stay abreast of emerging trends and technologies in the field.By doing so, IP service providers strive to offer comprehensive and accurate search services to their clients, assisting them in making informed decisions regarding intellectual property protection, licensing, and enforcement.

Govt. Office
Following is the summary of responses received from the Government officials Enhancing Patent Quality: Government offices are committed to granting high-quality patents that meet the criteria of novelty, inventiveness, and industrial applicability.IP search challenges, such as complex patent language and inconsistent terminology, can impact the quality of patent examinations.
Government offices strive to address these challenges to ensure that granted patents are valid, enforceable, and contribute to technological advancements.

2.
Facilitating Timely Examination: Timely examination is essential for providing legal certainty and fostering innovation.IP search challenges, including the vast amount of data and hidden information, can prolong examination timelines.Government work towards improving search tools, databases, and examiner training to enable efficient and accurate searches within reasonable timeframes.

3.
Supporting Domestic Industries: Government offices recognize the importance of promoting domestic industries and supporting their intellectual property needs.Effective IP search plays a crucial role in helping domestic inventors and businesses navigate existing IP rights, avoid infringement, and identify opportunities for innovation.Addressing search challenges enables government offices to provide better support to domestic industries and foster their growth.

4.
Encouraging Foreign Investments and Collaboration: Governments often aim to attract foreign investments and encourage international collaborations.A robust IP search system is crucial in providing clear information on existing IP rights, ensuring transparency, and facilitating foreign investors' confidence in the local IP landscape.Overcoming search challenges helps create a favorable environment for foreign investments and collaboration in research and development.

5.
Promoting Technology Transfer and Licensing: Government offices recognize the importance of technology transfer and licensing in driving innovation and economic growth.Thorough IP search helps identify available technologies, patent licensing opportunities, and potential partners for technology transfer.Addressing search challenges enhances the accessibility and usability of patent information, facilitating technology commercialization and licensing activities.

6.
International Harmonization and Cooperation: Governments engage in international harmonization efforts to align their IP systems with international standards and facilitate cross-border IP protection.Harmonization aims to reduce search challenges associated with multiple jurisdictions, language barriers, and differences in legal systems.Government offices actively participate in international cooperation initiatives to improve search capabilities and promote global IP collaboration.
Government offices typically allocate resources to address IP search challenges by investing in technology infrastructure, training examiners, and improving access to comprehensive databases.They collaborate with stakeholders, including industry associations, inventors, and international organizations, to gather insights and enhance search processes.By addressing IP search challenges, government offices strive to create a supportive environment for innovation, protect intellectual property rights, and stimulate economic development.

Education
Following is the summary of responses received from the professional from education sector

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Hands on experience and preparing for specialization ↗ Decisioning on IP filing for the innovation ↗ Data collection and processing From an educator's perspective, there are several challenges in IP search that can impact the sector.Some of these challenges include: 1.
Access to comprehensive and up-to-date information: Finding accurate and comprehensive information on intellectual property rights can be challenging.The vast amount of data, including patents, trademarks, copyrights, and trade secrets, makes it difficult to navigate and stay updated with the latest developments.

2.
Complex and ever-changing legal frameworks: Intellectual property laws vary across countries and are subject to frequent changes and updates.Educators need to stay abreast of these legal frameworks to provide accurate information to students.However, keeping track of the evolving laws and regulations can be time-consuming and challenging.

3.
Language and technical jargon: Intellectual property documents often contain complex legal and technical terminology.Understanding and interpreting these documents require a deep understanding of the subject matter.Language barriers can also pose challenges when conducting IP searches across different jurisdictions.

4.
Limited access to specialized databases: Access to comprehensive databases that contain patent information, trademark registrations, and copyright records can be costly or limited.Educators may face challenges in accessing these databases, particularly if they are affiliated with institutions or organizations with limited resources.

5.
Data quality and reliability: Ensuring the accuracy and reliability of the data retrieved during IP searches can be a challenge.Errors in data processing, incomplete records, and outdated information can lead to unreliable search results.Educators must critically evaluate the quality of the data they use in their teaching materials.

6.
Teaching practical application: Translating the theoretical aspects of intellectual property into practical applications can be challenging for educators.IP search involves understanding the intricacies of patentability assessment, infringement analysis, and licensing considerations.Educators need to bridge the gap between theory and practice to effectively teach students about IP search and its real-world applications.
To overcome these challenges, educators can benefit from collaborating with IP professionals, utilizing specialized IP search tools and resources, and staying updated with developments in intellectual property law.Additionally, promoting interdisciplinary approaches that integrate legal, technical, and business perspectives can enhance the teaching and understanding of IP search in the education sector.Standardization (Process Category) During the pilot study, respondents expressed concerns about the lack of process standardization in the IP search examination phase.They identified challenges related to templates, input/output formats, and data harmonization.Respondents noted the absence of uniformity in templates used for documenting search results and analysis, leading to inconsistencies and difficulties in comparing and evaluating findings.The lack of standardized data harmonization practices also posed challenges in integrating and analyzing innovations from multiple sources.Respondents emphasized the importance of clear guidelines, standardized templates, and consistent input/output formats to streamline the IP search examination process.They suggested that standardized processes and formats would enhance efficiency, accuracy, and interoperability, facilitating better collaboration and knowledge sharing among stakeholders involved in IP search activities.Addressing these challenges would contribute to improved decision-making, resource optimization, and overall effectiveness in the examination phase of IP search.Deep dive -The need for standardization in IP search is essential to address the challenges posed by the diverse and fragmented landscape of intellectual property.A standardized framework would promote consistency in search methodologies, classification systems, and data formats across different patent databases and jurisdictions.This would enable researchers to conduct comprehensive searches, compare results accurately, and make informed decisions.Standardization would also facilitate interoperability among different IP search platforms, allowing seamless data exchange and collaboration.Moreover, it would enhance the efficiency of patent examination processes by providing uniform criteria for assessing patentability.Overall, standardization in IP search would promote transparency, reliability, and accessibility, fostering innovation and benefiting stakeholders in the intellectual property ecosystem.

3.
Legal Knowledge (People Category) According to respondents, the knowledge levels of participants in the intellectual property (IP) search process, including their understanding of legal, technical, and domain-specific aspects, greatly impact the overall effectiveness and efficiency.They suggested that developing user-friendly processes, documenting knowledge, and simplifying formats and templates would contribute to improving the search process.However, the topic of knowledge in the IP search process is considered broad and contextual, encompassing policies, domains, and legal frameworks.As a result, it is recommended that an independent research initiative be conducted specifically focusing on the knowledge aspect, as it falls outside the scope of the current research.

4.
Software Enhancementexisting databases (Tools Category) Certain respondents raised concerns about the limitations of existing tools and software in intellectual property (IP) search, including fragmented formats, querying processes, query results (formats and contents), and user-friendliness of screens with navigation complexities.They expressed the belief that improving the functionality and capabilities of software databases would greatly alleviate the challenges encountered in the IP search process.While these responses shed light on the need for enhancements in existing tools, it is important to note that they have limited relevance to the specific research topic at hand.Addressing these software-related limitations would require an independent initiative focused on software development and improvement, separate from the scope of the current research.

5.
Efforts (People Category) Some respondents emphasized the significant efforts required throughout the intellectual property (IP) life cycle.In particular, IP Centers of Excellence (CoEs) and IP service providers experienced the impact of the process due to their interactions with diverse innovator communities and IP offices.However, it is important to note that these responses have limited relevance to the specific research topic being considered, which focuses on exploring the challenges faced during the examination phase of the IP life cycle.Therefore, while the efforts required by IP CoEs and service providers are acknowledged, they are not directly aligned with the focus of the study.

5
CONCLUSION The pilot study on exploring the challenges faced during the "Examination" phase of the Intellectual Property (IP) life cycle has provided valuable insights into the difficulties encountered in IP searches.Through qualitative methods such as interviews and focus group discussions, the study identified challenges including limited search databases, complex queries, and time-consuming processes.The To facilitate the developmental research, a second pilot study will be carried out specifically to identify a suitable AI model and examine its efficacy in optimizing the search phase of intellectual property.This additional study will provide valuable insights into the potential of AI technology in improving the efficiency and effectiveness of intellectual property search processes.

Data saturation
The point at which new information and insights cease to emerge from the collected data, indicating that the sample size is sufficient to address the research objectives.

Prior-art search
One of the initial steps before filing a patent.It involves searching for all existing prior arts that are nearest to the given technological innovation within the same domain.

Patent Monetization
Patent monetization is the process of generating revenue by selling or licensing patents to others.

Novelty/ Patentability
Search process used to determine if an invention is new and unique

Figure 1 :
Figure 1: Pilot Study Timelines Top 5 weighted responses by the respondent are -1.Language -Readability, Articulation, Translation (Process Category) The respondents in the pilot study highlighted challenges related to readability, articulation, and translation during the intellectual property (IP) search examination process.They expressed concerns about the clarity and comprehensibility of documents, particularly legal and technical texts, which can impede the search and analysis process.Difficulties in articulating search queries effectively and accurately translating information from different languages, diagrams were also identified as significant obstacles.These challenges can hinder the efficiency and accuracy of the IP search examination phase, emphasizing the need for improved readability, clear articulation, and effective translation methods to enhance the overall search process.Addressing these issues could contribute to better understanding and interpretation of IPrelated information, enabling more efficient decision-making and knowledge extraction from search results.Deep dive -The need for improvement in IP search related language is driven by the challenges researchers face in comprehending complex patent documents.Readability enhancements are crucial to facilitate the understanding of legal and technical jargon, enabling users to extract valuable information efficiently.Improved articulation capabilities would aid in summarizing intricate concepts, saving time and facilitating faster evaluation of patent relevance.Translation advancements are necessary to bridge the language barrier, ensuring researchers can access a broader pool of global intellectual property resources accurately.Language comprehension improvements would enhance search algorithms' accuracy, enabling precise results by disambiguating terms and understanding context.Overall, these enhancements would create a more intuitive and user-friendly experience, empowering researchers to navigate the intellectual property landscape effectively.Literature study indicates that issues involved in patent search (when traditional prior art search techniques are employed) usually are around resulting in a large number of false positives and false negatives.•Data processing errors, • Errors due to language pitfalls, • Errors due to faulty syntax, • Classification error 2.

Table 1 : Pilot Study Procedure Sr.
Development of questionnaire ↗ Plotting timeline view over the plan ↗ Necessary approval from institution ↗ Setting-up a periodic review mechanism ↗ Identification of phases & subactivities in each phase ↗ 2-pronged approach (qualitative & developmental studies) • Email: editor@ijfmr.comIJFMR240112192 Volume 6, Issue 1, January-February 2024 4 ↗ Stakeholder identification and inclusion criteria definition ↗

Figure 3: Pilot Study Response Analysis Categories Sub Categories Innovators Legal Professional IP CoEs IP Service Provider Government Representative Education Sector Total
Following table depicts the response analysis depicting score across various categories -

Table 10 : Bibliography Terminology Definition Intellectual property
Creations of the mind, such as inventions; literary and artistic works; designs; and symbols, names and images used in commerce