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Patent Searching Basics
Patrick M. Torre, Ph.D.November 18, 2015
Patent
• A grant by a national government (to an inventor or a company) of the right to exclude others from making, using, selling, or offering to sell their invention for a limited period of time.
Patent Systems
• National - Makes little sense if more than one or 2 countries. May be the only option for certain countries that do not participate in international treaties.
• Regional – better if only one or two regions of interest.– Patents in Europe via EPO – www.epo.org– African Regional Industrial Property Office
Patent Systems
• International Route− Patents – Patent Cooperation Treaty− Hague System for the International Registration of
Industrial Designs
www.wipo.int
What is Prior Art?• Information that is available prior to the effective date of a
patent application.• Typically the application filing date.• Any public document, such as published patent applications,
technical publications (journal articles), conference papers, websites, available products, marketing/advertising information, others.
• Typically you are looking for published documents in a patent search.
Why search for prior art?
• Organized review of prior art materials from public sources – used for:− Patentability searches.− Patent examination searches.− Validity searches.− State-of-the-art searches.− Determine the value of a potential investment in
patented technology.− Infringement analysis.− Speed up patent prosecution.
Patentability search
• Present claims specifically drafted to avoid known prior art.
• Reduce costs associated with procuring a patent from a national patent office.
• Indicate potentially productive areas for R & D resources.
• Identify existing technologies which might create infringement issues.
State-of-the-art Search•Assess a particular technology field before investing resources. •Identify a strategy to design around existing technology. •Identify existing technology/art, develop around it.
Anatomy of a Patent
• Every part of a patent can help in the search process.
Anatomy of a Patent
• Title• Abstract• Technical Field• Background – what is the problem, how have others solved
it.• Summary – high level – here is how we solved the problem
and why our solution is better.• Drawings• Detailed Description – in depth – here is how we solved the
problem and why our solution is better.• Claims
Anatomy of a Patent
• Abstract, Technical Field, Background, Summary, Detailed Description – set the stage, tell your story.
• Drawings – illustrate particularly important aspects of the invention as described in other parts of the patent.
Claims
• Describe the invention in a single sentence.
Patent Searching
• Understand the invention being searched – avoid spending time studying irrelevant results.
• Patentability of an invention is determined only with reference to the claims.
• The claims are interpreted with reference (“in light of”) the specification.
How to search
• Identify defining concepts of the invention.• Identify the essential features of the invention.• Determine common nomenclature for features of
the invention.• Consider alternative embodiments of the invention.• Searching is an art, as much as a science, and is
learned over time.• The best references are rarely, if ever, immediately
found.
How to search
• Keyword searches: what words are used to describe the invention/technology?
• Alter or add keywords if relevant results are not found.
• Consider whether different countries may use different words for the same item (hood vs. bonnet).
• Consider synonyms.• Use wildcards – consult help links for your specific
search platform.
How to Search
• Add in classification systems.• Use the specification of patents found to see
how those have been classified.• Consider patents cited against references you
have found – this can provide relevant prior art documents.
• Consider searching by inventors/applicants listed in references you have found.
Where to search
• Google Patents – www.google.com/patents– Good starting point – effective search algorithm.– Provides links to other major search platforms.– Some limitations in non-U.S. prior art.– Limited field combination possibilities.
Where to search
• National patent office databases and search engines.– U.S. Patent Office – www.uspto.gov– Only U.S. patents/published applications.– Relatively complex search engine, especially for
advanced searches.– Can be slow.
Where to search
• Regional databases– Espacenet – worldwide.espacenet.com– European patent office.– Includes many jurisdictions, including Europe and
U.S.– Advanced and simple search options.– Machine translations often available.
Where to search
• International databases:• WIPO (World Intellectual Property
Organization).• Patentscope.wipo.int/search/en/search• Prior art from most jurisdictions.• Advanced and simple search options.
