Steps to Successful Preliminary Patent Searching Karen M. Kitchens Patent and Trademark Resource Center Wyoming State Library

Critical Thorough Searching is Critical Search Benefits Patentability Prior Art Preliminary U.S. Patent Search U.S. Patent Classification System Cooperative Patent Classification 7 Step Strategy Unique Offerings at WSL

Search Benefits for Inventors Better prepared to discuss ideas confidentially. Avoid infringement. Track research and development. Access to wealth of information.

Types of Patents Utility - 20 years from filing date Design - 14 years from date granted Plant - 20 years from filing date

Criteria of Patentability Utility Non- obvious Novelty

What Is Prior Art? Art = Technology 35 USC § Conditions for Patentability; Novelty and Loss of Right to Patent All information that has been disclosed to the public in any form about an invention before a given date.

Examples of Prior Art Prior Art Patents Books Trade or Professional Journals Advertising Catalogs Government Documents Illustrations

AIA & Prior Art Pre March 17, 2013 “First to Invent” Pre Invention Date Disclosure Within US (Public use or placing invention on sale) Post March 17, 2013 “First to File” Pre Filing Date Disclosure Anywhere in the World (Public use or placing invention on sale) America Invents Act (AIA)

Non-Obvious Sufficiently different from what has been used or described prior. Non-obvious to person having ordinary skill in area of technology. Patent N0.: US 8,569,980 B2 Oct. 29, 2013

Where to begin? Published Patents and Applications USPTO PatFT Full Text present USPTO AppFT – All Published Applications present USPTO PAIR- Current Applications

Pitfalls of Keyword Searching Titles and abstracts often vague  Slinky = “Toy and Process of Use”  iPod = “Media Device” Terminology changes British spellings and terminology (e.g. tyre, aluminium, petrol, defence) Keyword searchable from 1976 (USPTO website) All patents prior art

7 Step Strategy Classification Access Full Text Review CPC Step 1 - Brainstorm Keywords Step 2 - Determine the Initial USPC Classification Step 3 - Verify Relevancy Step 4 - Read Classification Definitions Step 5 – Search Issued Patents and Published Applications Step 6 – Find relevant CPC Classifications Step 7 – Search Espacenet for additional CPC Classifications, if needed

7 Step Strategy Click Here

7 Step Strategy Click Here

Step 1: Brainstorm Step 1

Step 1: Brainstorm Purpose? Utilitarian or ornamental? Process or product? What is the invention made of? How is it used? Keywords and technical terms that describe? Vehicle Automobile Internal Combustion Engine Fuel Injection

Step 2: Determine Initial Classification Click Here

Step 2: Determine Initial Classification Go to "M" for Mousetrap"M" Go to "M" for Mousetrap"M"

Step 3: Verify Relevancy Manual of Classification Link to Class Schedule Link to Class Schedule Mouse trap: Class 43 Fishing, Trapping, and Vermin Destroying/ Subclass 58+ Traps Mouse trap: Class 43 Fishing, Trapping, and Vermin Destroying/ Subclass 58+ Traps

Step 3: Verify Relevancy Dots – indicate a level of indentation between subclasses. Subclass Numbers link to subclass definitions file. Class Title Class Number – Links to Class and Subclass definitions file.

tions Step 4: Read Classification Defini tions Subclass 58 Traps

Step 5: Review Published Applications and Patents in Selected Subclasses Manual of Classification icon links to search of Pre Grant Publication Applications Pre Grant Publication Applications icon links to search of Granted Patent Applications Granted Patent Applications

Step 5: Review Published Applications and Patents in Selected Subclasses Click here to view Granted Patent Abstract

Step 5: Review Published Applications and Patents in Selected Subclasses Click here to view Patent ImagePatent Image Click here to view Patent ImagePatent Image

Step 6: Find Relevant CPCs 4358

Step 6: Find Relevant CPCs

Step 7: Conduct CPC Class Scheme Search

Patent and Trademark Resource Center (PTRC) Designated by USPTO. Disseminate patent and trademark information. Support the IP needs of the public. Over 79 PTRCs throughout the U.S.

Unique Offerings at PTRC Reference Materials and Tools ◦ USPTO manuals, guides and handbooks. ◦ USPTO directories and general publications. ◦ Non-USPTO publications. One-on-One Training PubWEST PubEAST

Comparison of Features: PubWEST vs. PubEAST Pub WESTPubEAST Freeform or Structured SearchStructured Search Only Faster Searching than Online More EPO and JPO AbstractsEPO and JPO Abstracts STIC Foreign PatentsSome STIC Foreign Patents via FPRS Difficult to Tag DocumentsEasy Tagging of Documents & Placement in Separate Folders Unable to Make Pagemarks.Create Pagemarks on Patent Pages

Updated for Finding Relevant CPC Classifications Both PubWEST and PubEAST provide relevancy ranking to search results for:  Cooperative Patent Classification (CPC)  U.S. Patent Classification  International Patent Classification (IPC) Bottom line: You waste less time looking at patents loosely related to your search.

How Do PubWEST & PubEAST Differ from PatFT and AppFT on USPTO Website? …Faster

…Faster, More Precise Searching with Proximity Operators NOT AND OR

…Faster Searching with Optional Key Word in Context View Text display choice can be “KWIC” Key Word in Context –  Displays only paragraph(s) containing search term(s). Not possible on USPTO PatFT and AppFT.

…Faster Searching with Set Numbers Searches are saved in set numbers, easily combined. Not possible on USPTO web’s PatFT and AppFT.

...Faster Searching with Multiple Database Search

…Faster Viewing Time saver: move from front page image to front page image in a list of patents with one click

More…Patents: Foreign Patents Access EPO Abstracts JPO Abstracts Foreign Document Images Retrieval (PubWEST)

More…Display and Download Options Side by Side Display : Clicking on the publication numbers on the left, “flip” through the front pages..

Downloaded Results in a Spreadsheet The selected records will download to a spreadsheet in a.csv file, if you have spreadsheet software on your PC.

Summary PubWEST and PubEAST are portals to patent databases from the U.S. Patent and Trademark Office. Powerful, time-saving features. Features only available at no charge at the USPTO Public Search Facility and PTRCs. Try out PubWEST or PubEAST for your searching needs.

Questions? Karen M. Kitchens Patent and Trademark Resource Center Wyoming State Library