Patent Searching: Sleuthing Your Way to Stronger Patents
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The presentation outlines effective strategies and techniques for conducting prior art searches and emphasizes the importance of professional searches for ensuring novelty, protecting intellectual property, and gaining competitive advantages. It discusses various search types, including patentability, validity, infringement, and freedom-to-operate, as well as practical tips for effective searching. Additionally, the document highlights the complexities of patent searching, the importance of context, and the subjective nature of the process.
Patent Searching: Sleuthing Your Way to Stronger Patents
- 1. Prior Art: Searching Strategies and Techniques Shelley Couturier | July 27, 2021 This presentation is for information purposes only and does not constitute legal advice.
- 2. Format • 10 Minutes: Ice Breaker • 15-20 Minutes: Problem Solving • 30-35 Minutes: New Material
- 3. Ice Breaker Imagine you are a superhero. Your arch-nemesis’ mission is to annoy and torment you. How would they do that?
- 4. Shared Problem Solving • Fun Strategy Tidbits? • Any problems you are encountering with the USPTO? • Any practice issues arising? • Any technical issues you are facing?
- 5. Overview • Why inventors and companies should have a professional search conducted • Types of searches and scope • Tips for searching • Conducting the search • Reporting the search results
- 6. Why a Professional Search: First steps • Ensure novelty and/or non-obviousness of your invention – Know what’s in the public domain before investing time, resources, and money – An early opportunity to change design plan to overcome existing art – Reduce prosecution costs by filing properly scoped initial claims
- 7. Why a Professional Search: Offensive • Patents are business assets that add value and give your business a competitive advantage – Can you freely produce and sell your idea – License or enforce your patent – Obtain investment funds or stimulate an acquisition – Capture the white-space – Track your competitors, inventors and technology area * https://www.linkedin.com/pulse/flirting-danger-how-bumbles-ipo-driving-surge-ip-claims- towers/
- 8. Why a Professional Search: Defensive • Protect yourself from others – Corporations: • Goal of having a large number of patents in their portfolio for cross-licensing and leverage (quantity vs. quality) • Enforce their patents – Startups: • Focus on the core invention (quality vs. quantity) • Ensure breadth of coverage • Search for any in-force claims you may potentially infringe
- 9. Search Types • Patentability – The perfect search strategy to determine novelty and non- obviousness during the initial stages of product planning and development; completed prior to investing time and money – Focus: worldwide patents, published applications, NPL having any priority date – Scope: features, functionality, and breadth of the invention; the problem solved; keywords, synonyms, equivalents; classification / subclass
- 10. Search Types • Validity / Invalidity – Conducted after the issuance of a patent to locate any prior art before the priority date that validates or invalidates the claims of that patent – Focus: worldwide patents, published applications, NPL having an earlier publication date or earlier priority date – Scope: understanding of the allowed claims; keywords, synonyms, equivalents; forward/backward search of examiner-cited references; file wrapper information; assignee/inventor; classification/subclass
- 11. Search Types • Infringement / Noninfringement – Investigate whether claims of an enforceable, unexpired patent and published application cover or read-on your product or service; OR whether another product or service infringe your patent claims – Focus: exact or broader claims in unexpired patents and/or published applications (US or other countries depending on client); unexpired references only – Scope: understanding of the product/service; keywords, synonyms, equivalents; forward/backward search of examiner-cited references; assignee/inventor; classification/subclass
- 12. Search Types • Freedom-to-Operate or Clearance – Can you freely produce, use, or sell your product/service in a particular country? Is your product/service already in the public domain? – Focus: worldwide patents, applications, NPL; claims of unexpired patents – Scope: Understanding of the product/service; keywords, synonyms, equivalents; forward/backward search of examiner-cited references; file wrapper information; assignee/inventor; classification/subclass
- 13. Search Types • State of the Art – Gather trends, companies, and inventors in a particular technology field in order to assist R&D, marketing, acquisition value, joint ventures, business funding, licensing, etc. – Focus: worldwide patents, applications, NPL; may be date- limited to exclude older technology – Scope: understanding of the technology field; iterative process that may narrow and broaden depending on the client’s focus
- 14. Search Types • Landscape – Ensure sound business decisions and investment, supports determining commercial or licensing value of your patent; helps understand the benefits or risks in entering a new technology area; provides competitive intelligence; identifies white space in crowded fields – Focus: worldwide patents, applications – Scope: understanding of the technology field; generally an on-going and iterative process that narrows and broadens depending on the client’s focus
- 15. Searching Strategies Tips to find the needle in the haystack • Forward/Backward search of examiner-cited references, including NPL – These are the closest-found references based on examiner searches – Each reference provides more references that can be reviewed – Provides keywords, synonyms and equivalents that may be unknown – Glean the classification / subclasses at that time
- 16. Searching Strategies Tips to find the needle in the haystack • Classification / Subclasses – Enter keywords at https://www.uspto.gov/web/patents/classification/, to select the classification and subclasses – importantly, the keywords need to focus on the inventive element(s) – Easier, quicker methods to determine the classification: • Use the examiner-cited references, if available • Perform a quick keyword search and note the classifications of the closest found references – A comprehensive search should include a review of all references in a core class / subclass for relevancy
- 17. Searching Strategies Tips to find the needle in the haystack 1. Search the structure / function (What is it?) 2. Search the problem solved or end result (What does it do?) 3. Combine what it is and what it does – Start broad and narrow: • Search using main keywords, narrow by adding more keywords, iteratively narrow by grouping keywords with Boolean operators, rearranging the keywords and groupings, and using the class / subclass – Start narrow and broaden: • Combine what it is and what it does and work outward by removing keywords • Search within the class / subclass using keywords
- 18. Searching Strategies Tips to find the needle in the haystack • Some technology tips: – Mechanical (generic terminology): review the drawings first – Electrical (very crowded tech, class searching very difficult): search Asian databases (JPO), IEEE; f/b search of cited references – Business methods (generic terminology; not represented in drawings): search the problem solved or the end result – Software: search what it does or the problem solved – Chemical, Biotech (brand names, compounds, etc.): generally requires a skilled searcher who has experience in the technology
- 19. Searching Strategies Tips to find the needle in the haystack • Use several different databases: – Google, Google Patents, Google Scholar – Free Patents Online, ProQuest, USPTO – Espacenet, WIPO, JPO, EPO – Science Direct, IEEE *Each database / search engine uses Boolean commands, truncation wildcards, and proximity operators differently
- 20. Searching Strategies Tips to find the needle in the haystack A patent agent or searcher knows the keywords, synonyms, and equivalents; can look up classifications; and uses various Boolean combinations and search strings to find prior art. However, more importantly, an agent understands that searching is not only focused on the mechanics of the search without having an overall understanding of the invention. When reviewing references, a patent agent understands the context of the keywords used in the descriptions.
- 21. Invalidity Search: Claim 1 US Patent No. 9,736,792 B2, Balasubramanian et al. Priority Date: 1/16/2013 Cont. of US 9,161,314 B2 Classification: CPC: H04W52/30; G08B21/182; H04W52/22; H04W52/281; H04W52/367 Field of Classification: H04W52/281, 52/367, 52/22
- 23. Apple’s Pre-Appeal Brief Request for Review
- 24. Reference No. Pub Date Title Inventor Claim 1 Location Segment A method implemented in a mobile device, the method comprising: receiving a temperature reading from a sensor included on the mobile device; comparing the temperature reading to a threshold temperature; sending a power cap setting message to set a power cap when the temperature reading is greater than the threshold temperature, wherein the power cap is a non-zero maximum transmission power of the mobile device; and sending a power cap release message to release the power cap for at least a period of time if (i) the power cap is set and (ii) a feedback message is received, the feedback message indicating that the mobile device is transmitting a critical message.
- 28. 1. Priority date is before critical date of Apple (pre-AIA) 2. Review the Title 3. Review the Abstract 4. Read the description 5. Note the classification 6. For a comprehensive search, f/b search the examiner-cited references, add any new synonyms or equivalents, add the relevant classifications
- 31. CAVEATS • Searching is subjective; patent examiners are subjective • With over 11,000,000 patents, applications and NPL, a comprehensive and thorough search requires working closely with the client in order to perform a focused examination • Searching will not uncover references that have not been published or remain trade secrets