The Peculiar Searching Habits of the North American Patent Searcher

Copyright 3LP Advisors - 2011

-Attorney Confidential-


The Peculiar Searching Habits of the North American Patent Searcher

Anthony Trippe – Director, IP Analytics

March, 2011 - Intl. Symposium on IPR Information Dissemination, Taipei, Taiwan

3LP Advisors

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USPTO– Granted patents database– Published applications database– Public PAIR– Maintenance database– Assignment database– US Classifications

Free services– Google patents– Patent Lens– Patent Calls– PriorSmart

For-fee services– Thomson Innovation– STN International– Questel

Sources covered

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USPTO – Granted Patents Database

http://patft.uspto.gov/netahtml/PTO/search-adv.htm - Advanced Search

Inventors are encouraged to search the USPTO’s patent database to see if a patent has already been filed or granted that is similar to your patent. Patents may be searched in the USPTO Patent Full-Text and Image Database (PatFT). The USPTO houses full text for patents issued from 1976 to the present and TIFF images for all patents from 1790 to the present.

Searching can be done on:– Quick Search– Advanced Search– Patent Number Search

Images also available with downloadable plug-in Advanced search relies on the use of fields and can incorporate

Boolean queries– ttl/(tennis and (racquet or racket)) 3

http://patft.uspto.gov/netahtml/PTO/search-adv.htm



USPTO – Granted Patents Database – Image

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USPTO – Published Applications Database

http://appft1.uspto.gov/netahtml/PTO/search-bool.html - Quick Search

Search for Full-Text and Image versions of patent applications. Customize searches on all fields of a patent application in the AppFT for Full-Text searches.

Searching can be done on:– Quick Search– Advanced Search– Patent Number Search

Images also available with downloadable plug-in Advanced search relies on the use of fields and can incorporate

Boolean queries– ttl/needle or ttl/syringe andnot (sew or thread$)

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http://appft1.uspto.gov/netahtml/PTO/search-bool.html



USPTO – Published Applications Database – Image

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USPTO – Public PAIR

http://portal.uspto.gov/external/portal/pair - Public PAIR

The Patent Application Information Retrieval (PAIR) system provides IP customers a safe, simple, and secure way to retrieve and download information regarding patent application status.

Requires Re-Capcha for entrance Search by application number, patent number or publication

number Provides electronic file wrappers for past several years Can be used to follow continuations Provides a portal into the maintenance database One of the only ways to check migration from published

application to granted patent Private PAIR also exists but you need to have a certificate and

access to applications filed less than 18 months ago

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http://portal.uspto.gov/external/portal/pair



USPTO – Public PAIR – Image

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USPTO – Maintenance Database

https://ramps.uspto.gov/eram/patentMaintFees.do - Maintenance database

All utility patents which issue from applications filed on or after December 12, 1980 are subject to maintenance fees, which must be paid to maintain the patent in force. These fees are due 3 1/2, 7 1/2 and 11 1/2 years from the date of the original patent grant. Fee payments must include both patent and application numbers. If the fee is being paid for reissue, the application number required is the reissue application number.

Requires patent number and application number Use the Get Bibliographic Data button to access report on

maintenance of particular patent When does fee window open and close Which fee period is due Is the company a large entity or small entity

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https://ramps.uspto.gov/eram/patentMaintFees.do



USPTO – Maintenance Database – Image

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USPTO – Assignment Database

http://assignments.uspto.gov/assignments/?db=pat

During examination of a pending patent application or after registration, the owner of the mark may change: 1) the original owner may transfer ownership to another entity or party, through an “assignment;” or 2) the original owner may retain ownership but change its name. The original owner should record the assignment or name change with the USPTO’s Assignment Services Division by filing a Recordation Cover Sheet along with a copy of the actual assignment or proof of name change.

Electronic Patent Assignment System (EPAS)– Use EPAS to create and submit a Patent Assignment Recordation

Coversheet by completing on-line web forms and attaching the supporting legal documentation as black and white TIFF or PDF for submission via the internet.

Assignments on the Web for Patents (AOTW-P)– Use AOTW-P to search the database of all recorded Patent Assignment

information from 1955 to the present (Trademark Assignments recorded prior to 1955 are maintained at the National Archives and Records Administration). 11



USPTO – Assignment Database – Image

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USPTO – US Classifications

http://www.uspto.gov/web/patents/classification/ - US Classifications

The Office of Patent Classification maintains the U.S. Patent Classification system.

Recently announced that USPTO will cooperate with European Patent Office to create a unified classification system which will be based on EPO ECLA and will be jointly developed by both offices

Currently IPC codes are assigned based on a concordance Existing US classification system will be merged with ECLA in new

classification system Search by class and subclass Identify US to IPC8 concordance Identify US to Locarno concordance

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http://www.uspto.gov/web/patents/classification/



USPTO – US Classifications – Images

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Free Services – Google Patents

http://www.google.com/patents

Google and the USPTO have entered into an agreement to make bulk patent and trademark data available to the public at no charge

Quick search allows searching by patent or publication number Publication number searching requires year/publication number

format (2002/123456 for instance) where most other systems would only require yearpublication number (2002123456)

US only Spotty coverage of pre-grant publications Provides claims, images and citations readily Uses Google Book technology to allow for searching and

highlighting of text within the body of the patents Advanced search also available

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http://www.google.com/patents



Free Services – Google Patents – Images

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Free Services – Patent Lens

http://www.patentlens.net/daisy/patentlens/patentlens.html

Patent search interface in Chinese (中文 ), English, Russian (Русский), and French

Full text of PCT applications now searchable in Chinese, English, French, German, Japanese, Korean, Russian and Spanish

Full text of EPO patents now searchable in English, French and German

Search for lapsed, abandoned or expired US Patents Visualize Patent Families with new graphical trees as PDFs

– Unique feature– A pretty good attempt at a difficult concept

Includes Patent Family and Status including link to Public PAIR Free Full-text Worldwide Patent Searching - 10,702,297 patent

documents - updated Dec 21, 2010

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http://www.patentlens.net/daisy/patentlens/patentlens.html



Free Services – Patent Lens – Image

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Free Services – Patent Lens – Image Family Tree

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Free Services – Patent Calls

http://patentcalls.com/ - Patent Calls

Patent Calls™ combines expert IP research and state of the art software search and analysis tools - Connecting Patents to ProductsSM.

Provides maintenance information with “stop-light” indicators Provides information on post-issuance documents Allows comparison of applied for claims vs. granted claims

– One of the few sites that do this– Very powerful for quickly seeing the effects of examination on the

original claims Provides PDF images, citations, references and prior art US patents and applications only

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http://patentcalls.com/



Free Services – Patent Calls – Image

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Free Services – PriorSmart

http://news.priorsmart.com/

Best known for US litigation daily email– Let me know if you would like an invitation

Provides free searching Provides list of new patent litigations in the US Provides list of patent related Twitter activity Provides list of patent related blog posts Other services available by request

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http://news.priorsmart.com/



Free Services – PriorSmart – Image

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For-Fee Services – Thomson Innovation

http://www.thomsoninnovation.com/

Thomson Innovation is a single, integrated solution that combines intellectual property, scientific literature, business data and news with analytic, collaboration and alerting tools in a robust platform

Includes Worldwide patent data including full-text content of many countries

Includes Derwent World Patents Index Includes scientific literature and business documents as well as patents Forms based searching Subscription service

– Multiple users can subscribe at various levels with various features– Analyst level provides all analytical features and most liberal ability to

download information for analysis in Excel• Includes ThemeScape – Thematic mapping application• Includes citation trees• Includes text-clustering feature• Includes charting and graph service 24

http://www.thomsoninnovation.com/



For-Fee Services – Thomson Innovation – Image

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For-Fee Services – STN International

http://www.cas.org – STN International in North America

CAS' STN databases offer the largest collection and depth of chemical and related information compared to other commercial web based databases. In addition, CAS is the only company that has a unique, proprietary, chemical structure searching capability using its STN Express software. No other source can successfully meet the USPTO's requirements.

Best system for chemical structure based searching Command line, Boolean based searching system Includes nearly 200 databases including CAS, DWPI, patent, and

non-patent databases Provides access to STN AnaVist for advanced analysis and

visualization of patent and non-patent records from CAplus, DWPI and selected patent databases

Subscription service – pay by connect hour, search terms and display fees 26

http://www.cas.org/



For-Fee Services – STN International – Image

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For-Fee Services - Questel

http://www.questel.com/emailing/emailing_200909_ecommunique_Patents.htm

Provides command line driven interface as well as new form based interface called orbit.com

Provides MMS system for searching Markush chemical structures from French Patent Office (INPI) and Derwent (Thomson)

Also provides chemical structure searching Analysis products allow:

– Analyze documents by date, country, priority country, publication, and priority country timeline

– Detect assignees colaboration and top assignees– Measure technologies, assignees, etc. by IPCs– Identify cited and citing patents.

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For-Fee Services – Questel – Image

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For-Fee Services – ProQuest Dialog

http://www.dialog.com/products/guide/ip.shtml

The new ProQuest Dialog™ offers an intuitive interface which simplifies access to our breadth of content for researchers of all kinds. It is an exciting approach to precision search based on relevancy, transparency, control and completeness.

Provides command line driven interface as well as new form based interface

Provides more than 200 databases including many popular patent databases

Includes most comprehensive collection of non-patent databases

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http://www.dialog.com/products/guide/ip.shtml

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Patent Information Users Group, Inc.The International Society for Patent Information2010 Update


-Attorney Confidential- 3LP Advisors

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Who are PIUG members? PIUG has over 700 active members from 27

countries with the largest concentration of members from the USA, Europe and Japan– PIUG members are patent attorneys, patent

agents, licensing professionals, patent information researchers, patent information vendors, and patent information and documentation experts

– PIUG members are employed in performing patentability, freedom-to-practice, and validity patent searches for Fortune 500 / multinational companies, leading universities and major IP law firms

– PIUG members produce many of the tools used for patent searching and analysis



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What benefits does PIUG provide?

PIUG has an active Discussion Forum that is featured on the PIUG wiki, a global collaborative tool with over 1350 subscribers worldwide– Members access to conference presentations,

etc. PIUG schedules three annual meetings that

provide education and networking opportunities PIUG is developing training materials and working

in collaboration with other professional patent organizations towards international certification

Chinese chapter with over 100 members – http://piug.org.cn



Upcoming PIUG events

PIUG Annual Conference – Cincinnati, OH– 21-26 May 2011

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Education

The Peculiar Searching Habits of the North American Patent Searcher