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:
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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
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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.
THANK YOU!
Pat Torre
King & Schickli PLLC
pat@iplaw1.net
www.iplaw1.net
859-252-0889