TIPS FOR PATENT SEARCHING ON THE U.S. PATENT OFFICE WEBSITE by Jeffrey Semprebon © 2010, Michael J. Weins Introduction Searching for patents and p...
Author: Sheila Fletcher
3 downloads 1 Views 687KB Size

© 2010, Michael J. Weins

Introduction Searching for patents and published applications based on keywords can be done on the patent search page on the U.S. Patent Office's website: Text searching is available for patents issued as early as 1976. Older patents cannot be searched using their text, but can be searched by class or number, and their images can be obtained. One typically conducts keyword searching in the “Abstract” field, since the abstract is the section of the patent of 150 words or less that summarizes the patent’s teaching, and is specifically intended to aid in searching. The Patent Office began publishing pending applications in 2001, and the text of published applications can also be searched by keywords. Since the issued patents and published applications are on separate databases, they must be searched separately; however, the search strategy will be the same. Note that, to view the patent images, it may be necessary to install TIFF-viewing software that can handle the particular format used by the Patent Office. Free software is available and the information on appropriate viewing applications is provided on the USPTO website: Keyword Searching For keyword searching, try to find terms which describe the invention and which will distinguish the invention from similar prior art devices. General terms identify the overall field of the invention (such as “rodent trap”), while specific terms will typically be descriptive of or relate to the particular feature which separates the invention from earlier devices. Searchers should also keep in mind alternative terms to use as keywords, and avoid keywords which are unnecessarily limiting (for the example of a mousetrap, using only the terms “mouse” and “mice”would miss documents in which the inventor describes their invention as being a trap for “rodents”, “vermin”, “small animals”, etc.) The “Quick Search” option on the Patent Office’s search page guides

Page 1

the searcher in searching based on two keywords, and the results can be further refined. For example, if searching for an animal trap employing a laser to detect animals, a simple search could be conducted selecting the following query: Term 1: trap

in Field 1: Abstract

AND Term 2: laser

in Field 2: Abstract

The “Advanced Search” option allows the searcher to enter a more complex boolean string, either as an initial search or to further refine the results from a simple search. For searching in the “Abstract” field, the desired search terms are entered into the space provided, with each preceded by “abst/” to designate that the abstract field is to be searched. The search terms for an advanced search typically will include one or two “OR groups” of alternatives to identify the general field of invention, and in one or two “OR groups” for alternatives of the critical limitations. The terms may include wildcards (the “$” symbol) for likely variations in the words or to include plurals. However, if the resulting term would be likely to cause problems, the expected variants should be set forth in the “OR group” (in the example below, using the term “car$” would result in a wide range of terms, many of which would not be relevant, such as “cartridge”, “carrier”, “carbon”, etc.) It should be noted that the use of wildcards may slow the search process, and may make searching impractical at times when the USPTO website is particularly busy.

Page 2

Example of search terms for a solar-powered car alarm system: [first two OR groups identify the field of the invention] (abst/vehicle or abst/automobile or abst/car) and (abst/alarm$ or abst/secur$ or abst/protect$) and [last OR group includes terms likely to distinguish the invention from other car alarms] (abst/solar or abst/sunlight or abst/photovolt$ or abst/pv)

If such a search resulted in too few hits, less relevant terms in the field identifier could be omitted (a solar alarm for a home might be considered by a patent Examiner to make a similar alarm for a car obvious). If there are too many hits (over one hundred or so), an OR group could be added for additional limitations, or any terms in the OR groups which appear to be giving irrelevant results might be eliminated or narrowed. Anything less than about 100 hits can be scanned by title to try and pick out relevant looking patents or application, looking at the abstracts if necessary. The emphasis here should be to try and quickly evaluate which patents are worthy of a closer look. For those which appear to be of interest, one can scroll down to review the claims or use the “Images” button at the top to view the document images. As noted above, a suitable TIFF viewer (having group 4 compression) is needed to view the images. The Patent Office site includes links to some viewers for PC-type computers which can be downloaded and used for free. A viewer for Macintosh computers is also available, but apparently cannot print the images. Searching in Other Fields In some cases, the searcher seeks to find a particular patent associated with a product, company, or inventor. The simplest case is where the searcher has the patent number and wishes to see the patent. In this case, the searcher can use either the Quick search or the advanced search, entering the patent number and indicating “Patent Number” as the search field: Page 3

Term 1: 6,212,819

in Field 1: Patent Number (Quick search)

or PN/6,212,819 (Advanced search)

Alternatively, the searcher can simply use the option provided for Patent Number Search. In this latter case, the searcher simply enters the patent number in the box provided on the number search page and clicks on the “search” button. In an alternative example of searching, the searcher may be aware of a device being advertised for sale that is particularly relevant to the proposed invention, and wishes to identify any associated patents or published applications. Knowing the name of the owner company, “Maine Mouse-ah, inc.”, the searcher can search for the company name in the Assignment field as follows: Term 1: maine

in Field 1: Assignee Name

AND Term 2: mouse-ah

in Field 2: Assignee Name (Quick search)

or AN/maine and AN/mouse-ah (Advanced search)

In yet another example, the searcher knows the name of an inventor and wishes to identify their patents and/or any published applications. The searcher would search the name in the Inventor Name fields as follows:

Page 4

Term 1: leo

in Field 1: Inventor Name

AND Term 2: voelker

in Field 2: Inventor Name (Quick search)

or IN/voelker and IN/leo (Advanced search)

Searching by References If the searcher identifies an issued patent that seems to be particularly relevant, it may be advantageous to see what later patents reference it, and review earlier patents that were cited during its prosecution. To find any later patents, select the “Referenced By” link underneath the bibliographic data for the patent. Links to the earlier patents cited are below this link. If there are a large number, it may be worthwhile to review the patent’s “Background” section to see whether any of these cited patents are summarized therein. For published applications, there are no links to cited patents. However, if the searcher identifies a published application of particular interest, reviewing the “Background” section may identify earlier patents of interest, and these can be searched by patent number. If an application appears to be sufficiently relevant to merit the effort, it may be possible to review the status to see whether any office action has been provided by the Examiner; if so, the office action can be viewed, and will cite the references the Examiner is using as basis for rejecting the claims. This option is only available for more recent applications, for which the file history is available. To review the status of a published application, it is necessary to log into “Public PAIR”; this requires typing in “captcha” words to prove that one is an individual: Page 5

Once in the “Search for Application page”, the application number or publication number is entered in the provided space. Once the application data page loads, the tab for “Image File Wrapper” will provide a list of the actions and related documents available to be downloaded in PDF format. Conclusion In some cases, the search results will reveal one or more devices that are clearly so similar to the invention being searched as to raise a serious question as to whether pursuing patent protection for the invention is worthwhile. However, more often the search will identify devices designed to solve problems similar to those addressed by the invention being searched, but differing in one or more ways. In such cases, the results should be reviewed with a patent practitioner to evaluate the likely impact of these earlier inventions. This prior art can affect the likelihood of obtaining a patent and the potential scope and value of such a patent if obtained.

Page 6