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Stan Lewis National Patent Services

Learn how to conduct effective patent searches using tools, strategies, and techniques. Find relevant patents and avoid common pitfalls.

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Stan Lewis National Patent Services

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  1. Stan Lewis National Patent Services

  2. Stan@NationalPatentServices.com Voice : 703-998-5708 FAX : 703-998-5709 Cell : 202-210-7425 Presentation and Resource Notes : nationalpatentservices.com/NAPP I will not discuss all of these slides

  3. Do-it-yourself Searching : • Considerations for • Tools and Resources • Strategies • Types of searches • KWIC, NPL • Proximity Operators (NEAR#, W/#) • Boolean Sets (AND, OR, NOT) • See Resource Notes

  4. Patent Research • Confidential disclosure and results • Disclosures are sent via : • Digital means - email, Sharepoint • (has your server been hacked?) • Analog means - voice, fax, mail, etc. • (most secure) • Like having a Final Exam everyday

  5. Abraham Lincoln Method : “Give me six hours to chop down a tree and I will spend the first four sharpening the axe.” • Invented the ;) and US 6469 • You are now the searcher. • You will need a robust computer with dual monitors.

  6. Abraham Lincoln Method : • You may need two networked computers and three or four monitors. • Adobe 7 or higher (for OCR if needed) • http://www.pat2pdf.org/ • Definitely a swivel chair • Derwent, Lexis, Google, Free Patents Online, Cobalt, others

  7. Start sharpening by : Using terms from the disclosure search : • Google • Google Scholar – can use limited Boolean • Books from estate sales, Goodwill, etc. • Use favorite browser (WaterFox, etc.)

  8. Preparation (still sharpening) : • Read and study the disclosure • Ponder the mysteries • Research some terms • Write the objective • Walk the dog (if applicable)

  9. From these resources • Get terms of art • Learn more about the technology • May find patents that the client will find • May even find the invention • BAZINGA!

  10. General Search Considerations • Shoshin (beginners mind) • Ponder the mysteries • Finalize the objective • Common misspellings? (adaptor, etc.) • Need drawings or clarification? • Do not make assumptions!

  11. Ab Initio Considerations See resources notes • Start search with the narrowest interpretation of the invention • Use the inventors terminology • Generate small, focused sets to find Class and maybe SubClasses • Search Classification Indices for topic • Identify the relevant Classes/Subclasses

  12. Ab Initio Considerations • Identify possible internet references • Get more terms of art • Bazinga! • ad infinitum... • References discussed in a specification are not always cited on the front (hyperlinks!)

  13. Ab Initio Considerations • Internet research may yield an inventor • Patent research may yield a research paper • Unimportant patents/apps may contain references worthy of forward/backward searching • Always do forward/backward search on the best references

  14. Ab Initio Considerations • Narrowest interpretation should find something • Use stemming (suffix) operators plus ONE • Expand sets with wider proximity operators and new terms • Narrow sets with Class/Subs • US Classes • IPC Classes • CPC Classes

  15. Free Patent Search Tools See resources notes • Google Patents • Free Patents Online • Proximity Operators • Boolean • Espacenet • WIPO Patent Scope • Of course EAST if at the PTO! • Generally should use resources available to the examiner like : EAST, Derwent, Lexis-Nexis, DIALOG, etc.

  16. Boolean & Proximity Operators A = Keyword, B=another keyword, C= Class/SubClass

  17. Subscription Tools Look for limitations on consecutive proximity operators • Lexis-Nexus • Derwent (Thomson-Reuters now) • PatBase • ProQuest • Orbitz • Cobalt, Others … • See resource notes

  18. Subscription Tools –thoughts • Lexis-Nexus • Great database Machine Translations (MT) • *Full text* English MT searchable • OCRs all PDFs (MT from Google) • Can remove family duplicates (difficult) • Search engine and Boolean (difficult) • Time consuming and complex to use

  19. Subscription Tools –thoughts • Derwent (Thomson-Reuters) • Great search engine & Boolean (EAST) • Database is very good but pricey • Derwent Tittles and Abstracts • PatBase • Great search engine & Boolean • Database is OK • Organizes by family

  20. EAST and Derwent yield no hits for this : ALL=((((compressed NEAR2 natural NEAR2 gas) OR CNG) AND (constant NEAR5 pressure)) and (piston NEAR5 spring) and (engine NEAR5 (CNG or (natural NEAR2 gas)))) AND TAB=((engine NEAR15 (CNG or (natural NEAR2 gas)))); Lexis 11 hits (required two combining two sets) : (((((compressed W/2 natural W/2 gas) OR CNG) AND (constant W/5 pressure)) and (piston W/5 spring) and (engine W/5 (CNG or (natural W/2 gas))))) AND (TITLE-ABST((((engine W/15 (CNG or (natural W/2 gas))))))) One was similar to the invention sought. Now have Class/Sub-Classes for wider search. Note consecutive proximity operators

  21. Combine wider strategy with Class/Sub : • Narrowing - always include the parent : 434/300.ccls. then 434/276.ccls. (CCL/434/300, etc.) • IPC : G09B23/06 and always include the parent G09B23/00 • May also combine classes : ( 705/$.ccls. AND 434/$.ccls.) Note that Apps are not always classified correctly! May be in the parent Sub or anywhere else!

  22. Why does it take so long? • 5 to 20 business day typical turn around • 4-8 hours per novelty search • 10-16 hours per Clearance • 12-20 hours per validity (# claims?) • 20-40 hours per AE Novelty (# claims?) • Pondering takes time

  23. Priced according to difficulty • Time required to some degree (fixed fee!) • Technical level • RUSH Services • Resources consumed (DIALOG, etc.) • Lexis – OCRs in PDFs – makes easier to locate citations in reference

  24. Types of Searches : • Novelty • Accelerated Exam (AE) Novelty • Clearance, FTO • Validity

  25. Considerations for all types : • Is there a specific priority date? • Are there references provided? • Is the disclosure clear? • May you talk to an Examiner if needed?

  26. Novelty searches : • Prior art • Patentability • Collection • State-of-the-art (SOA) • Design

  27. Novelty Objective : Objective is to locate patents which will : • prevent inventor from getting a patent • seriously limit or drastically alter claims • generate billable hours due to lengthy discussions with an examiner • Ruin the inventors life • What and How?

  28. Novelty searches : • Would a combination of the types be better, i.e. SOA or Collection with Novelty? • Specific companies and inventors may emerge and should be noted in the report. • Any application (not provided) should be located by the searcher. • Be aware of trademarks and product names!

  29. Accelerated Exam Novelty (AE) “The USPTO has established procedures under which the examination of a patent application may be accelerated.” http://www.uspto.gov/patents/process/file/accelerated/index.jsp

  30. Accelerated Exam Novelty • Do a novelty search first! • May change claims • Cheaper initially • Specific search requirements by PTO • Specify when you file • Claims table is helpful to Examiners and may expedite App

  31. Each Claim is searched individually with some strategy • Search strategy is submitted for examiner review

  32. Accelerated Exam Novelty • Must provide primary classification • Must use Search Templates • Must follow specific search guidelines • Must interview an examiner (takes time) • Must include DIALOG ($$) or such

  33. Accelerated Exam Novelty • Each claim is to be searched • Independent claims • Perhaps dependent claims • PTO may reject the App since you did not search some unrelated Sub Class – 30 days to fix!

  34. Clearance : • Freedom to operate • Infringement? • Design • Be aware of trademarks and product names! • What and How for Novelty?

  35. Clearance : Locate patent which will : • Prevent one from manufacturing or selling a product • Initiate costly litigation • Generate billable hours Objective is to locate patents with claims directed to ….

  36. Clearance : • International? • State-of-the-Art/Clearance combination? • Target is claims of unexpired patents. • Is there a specific company or inventor? • Priority date? Unless instructed otherwise use the earliest date.

  37. Clearance : • Derwent English translations (TAC always) • Abstract is summary of claims • Title is summary of abstract • Do not limit the date until the end • Novelty (What) and Clearance (How)combination • Results may indicate further research. Although not relevant to the Clearance the following references may be of interest…

  38. Clearance : • Generate a table of results which includes Legal Status (Derwent, Lexis) • Results may lead to : • A patent for the inventor • An invalidity search for a patent potentially being infringed • More Fun!

  39. Validity or Invalidity : • Objective is to locate references prior to a specific date which will : • Invalidate the claims of a patent… • Generate costly litigation • Cause client to call me at 8PM begging for a specific IEEE reference that was lost (client due in court in the morning)

  40. Validity or Invalidity : MUST have the file wrapper (PAIR) Rejection references are the initial resource. Why was it allowed or rejected? Examiners search strategy? Examiners won’t help! Many validity studies are from AE Novelty not searched properly.

  41. Validity or Invalidity : • Think out-of-the-box • If the original sub-classes have expired one should search old class/sub-class as a literal • Do not limit the date until the very end of the search (your QC) Objective is to locate references prior to a specific date which were not considered by the examiner and may invalidate the claim(s) of …..

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