Patentability Searching
Josiah Hernandez
Patent search results depend on…
 Need for the search (type of search)
 Invention Disclosure
 Searcher
 Knowledge of the Subject Matter
 Search Methodology
 Search Tool
 Data Coverage
 Interface
 Budget / Time allowed
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Basic Search Techniques
 Identify and Group Subject Features
 Search Operators
 Prepare Text Queries
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Database Resources

www.uspto.gov

www.google.com/patents

IEEE

ProQuest

Google Scholar

ACM Digital Library

Applied Science & Technology Index

CiteSeer

CiteSeer X

Collected Algorithms (CALGO) of the ACM

Collection of Computer Science Bibliographies

COMPUSCIENCE

Computer and Information Systems Abstracts

Computer News Fulltext

Computer Science Bibliography

Computing Research Repository (CoRR)

INFODATA

INSPEC

MathSci

MathSciNet

National Technical Information Service (NTIS)

Safari Online Books

Software Patent Institute

Synthesis Digital Library of Engineering and Computer Science

Zentralblatt MATH (MATHematics Abstracts)

Tutorial: http://www.uspto.gov/web/offices/ac/ido/ptdl/CBT/
Properly Scoping the Search
 Identifying and Grouping Subject Features
 Considerations of the Invention Disclosure
 Informal description by inventor?
 Existing patent or drafted patent application?
 Problem-Need-Solution approach
 Generate Keyword/Phrase clusters
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Consider the following simple invention
disclosure…
High speed police chases are a danger to people and property. The amount of time a high
speed chase continues will increase the chances of civilian or material harm.
To prevent these chases from occurring, the need has arisen for a remote car disabling
mechanism used by police officers to impede the progress of the getaway car.
The mechanism would incorporate a tamper-proof receiver installed by default in every
automobile upon manufacture that responds to the signal from a transmitter to cut the
fuel supply and ignition to the engine. The receiver is connected to a relay that may cut off
power to a vehicle’s electric fuel pump or activate a cutoff valve. The relay also cuts power
to the ignition pack or distributor.
Transmitters and control modules are installed in all police vehicles. The officer may use
the control module to select the vehicle that requires disablement by identification (e.g.
license plate number) and transmit a fuel-cut-off signal to the appropriate vehicle. The
officer may be in a police vehicle such as a patrol car or helicopter.
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Properly Scoping the Search
 Questions to answer…
 What is the problem the invention is intended to solve?
 What is the need generated by the problem?
 How does the invention solve the problem?
 How does the invention function?
 What physically performs the function?
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Properly Scoping the Search
 Divide the concepts of the invention into…
 Problem: the concepts relating to the problem the invention is
intended to solve.
 Need: the concepts relating to the need for the invention
generated by the problem.
 Solution: the concepts relating to the way the invention
satisfies the need created by the problem.
 Function
 Structural Elements
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Properly Scoping the Search
 Problem: High-speed police chases are a danger to people
and property.
 Solution:
 What it is: Control Module, Transmitter, Receiver, Valve,
Switch.
 What it does: Remotely disables a car in motion by cutting off
the fuel supply and ignition.
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Properly Scoping the Search
Police, Law enforcement / Chase, Pursuit, Pursue / High speed, High
Velocity
Problem
Need
Solution
Function
Structure
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Disable, Impede, Block, Prevent, Inhibit, Restrict / Use, Operation,
Drive, Motion, Escape
Remote, Range, Distance / Vehicle, Car, Truck, Van, Automobile /
Disable, Impede, Block, Prevent, Inhibit, Restrict
Cut off, Shut off, Turn off, Disconnect, Break / Fuel pump, Fuel line,
Fuel injection, Fuel injector / Ignition, Distributor, Spark, Plug, Wire,
Battery, Power, Electrical
Receiver
Radio, Infrared, Ultrasonic, Wi-Fi, Bluetooth, Satellite / Receive,
Reception, Signal, Message, Data / Getaway Vehicle, Pursued Vehicle
Transmitter
Radio, Infrared, Ultrasonic, Wi-Fi, Bluetooth, Satellite / Transmit, Send,
Signal, Message, Data / Pursuing Vehicle, Chase Vehicle, Police, Law
Enforcement
Relay
Circuit, Switch, Breaker
Control
Module
Control, Module, Terminal, Computer, Station / Identify, Locate,
Determine, Match, Choose, Select, Find / Identification, Identifier,
License plate / Screen, Display, Keypad, Touchpad, Interface /
Getaway Vehicle, Pursued Vehicle / Chase Vehicle, Pursuing Vehicle,
Police, Law enforcement
Properly Scoping the Search
 Preparing Text Queries
 It is virtually impossible to generate a single waterproof set of text
queries.
 Yet, it is important to begin your search with a carefully thought out
set of queries to maximize efficiency and be systematic.
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Properly Scoping the Search
Police, Law enforcement / Chase, Pursuit, Pursue / High speed, High
Velocity
Problem
Need
Solution
Function
Structure
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Disable, Impede, Block, Prevent, Inhibit, Restrict / Use, Operation,
Drive, Motion, Escape
Remote, Range, Distance / Vehicle, Car, Truck, Van, Automobile /
Disable, Impede, Block, Prevent, Inhibit, Restrict
Cut off, Shut off, Turn off, Disconnect, Break / Fuel pump, Fuel line,
Fuel injection, Fuel injector / Ignition, Distributor, Spark, Plug, Wire,
Battery, Power, Electrical
Receiver
Radio, Infrared, Ultrasonic, Wi-Fi, Bluetooth, Satellite / Receive,
Reception, Signal, Message, Data / Getaway Vehicle, Pursued Vehicle
Transmitter
Radio, Infrared, Ultrasonic, Wi-Fi, Bluetooth, Satellite / Transmit, Send,
Signal, Message, Data / Pursuing Vehicle, Chase Vehicle, Police, Law
Enforcement
Relay
Circuit, Switch, Breaker
Control
Module
Control, Module, Terminal, Computer, Station / Identify, Locate,
Determine, Match, Choose, Select, Find / Identification, Identifier,
License plate / Screen, Display, Keypad, Touchpad, Interface /
Getaway Vehicle, Pursued Vehicle / Chase Vehicle, Pursuing Vehicle,
Police, Law enforcement
Properly Scoping the Search
 Common Text String Operators
 Boolean operators
 Typically AND, OR, NOT.
 For finding unions, intersections, and subtractions from data sets.
 Proximity operators
 Typically Wn, WFn, NEAR, SPACE.
 For finding words within a defined perimeter of other words
 Truncation limiters
 Typically indicated by a character such as *, #, ?, %.
 Most engines support back truncation, where some also support front truncation.
 For detecting varying derivatives of the same word.
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Scoping Text Queries
• The importance of truncation operators…
– (attach* or reattach*)
Attach
Attached
Attaching
Verb Reattach
(Re-attach)
Reattaching
(Re-attaching)
Reattached
(Re-attached)
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Noun Attachment
Attaching Device
Participle Attaching Member
Adjective
Attaching
Mechanism
Adjective Attachable
Adverb Attachably
Properly Scoping the Search
Problem
Need
FULL-TEXT: (police or (law enforcement)) near (chase or pursuit or
pursue)
Solution
FULL-TEXT: (remote*2 or range or distan*2) near (disabl*5 or
imped*4 or block*3 or prevent*4 or inhibit*3 or restrict*3) near (vehicle
or car or truck or automobile)
Function
FULL-TEXT: (((cut or shut or turn) WF1 off) or cutoff or shutoff or
disconnect*3 or break*3) near ((fuel WF1 (pump or line or inject*3)) or
ignition or distributor or spark or plug or wire or batter*3 or power or
electric*3 or circuit) and (vehicle or car or truck or automobile)
Structure
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FULL-TEXT: (disabl*5 or imped*4 or block*3 or prevent*4 or inhibit*3
or restrict*3) near (us*3 or operat*3 or driv*4 or escap*3 or motion)
near (vehicle or car or truck or automobile)
Receiver
FULL-TEXT: ((radio or RF or infrared or IR or ultrasonic or (wi fi) or
Bluetooth or satellite) near (receive*1 or reception or signal*4 or
messag*3 or data)) and (vehicle or car or truck or automobile)
Transmitter
FULL-TEXT: ((radio or RF or infrared or IR or ultrasonic or (wi fi) or
Bluetooth or satellite) near (transmit*5 or send*4 or signal*4 or
messag*3 or data)) and (vehicle or car or truck or automobile) same
((law enforcement) or police)
Relay
FULL-TEXT: (circuit or switch or breaker)
Control
Module
FULL-TEXT: (control or module or terminal or computer or console)
and ((identify*7 or locat*4 or determine*3 or match*3 or choos*3 or
select*3 or find*3) near (vehicle or car or truck or automobile)) and
(police or (law enforcement))
Patentability Searches
 Goal: Find prior art that could be used by a patent examiner to
reject the invention during prosecution.
 All prior public disclosure is prior art.
 Preparation for prosecution
 Aid in finding an appropriate breadth for the claims of a future patent
application.
 Aid in finding which aspects of the technology to focus a future patent
application.
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Patentability Searches
 Other things that characterize a patentability search:
 Used as preliminary research
 Relatively low budget, little time allowed
 Finds only the most closely related documents – typically not
exhaustive
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