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Patent Information Search Strategies for Information Professional –Case Study
R.D.Sathish Kumar Principal Technical Officer Head, Knowledge Resource Division Convener - Intellectual Property Management Cell CSIR-Structural Engineering Research Centre, Council of Scientific and Industrial Research Campus, Taramani, Chennai
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Patent Search - Case Study
Patent Information Search Patent Search is an online search database where users may conduct searches for any patent application or patent that has been published reports the existence of prior art affecting the patentability of an invention
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Need for Patent Information Search
The reasons for performing a patent search are many. The most obvious is to determine whether or not you can get a patent or if your invention has already been patented. Other reasons include: Getting a general idea of how an application and patent is structured to help in the preparation or your own application Learning more about a new field (studies have shown that 80% of all patents hold information that is not published anywhere else in the world),
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Competitor tracking Technology tracking Find alternative approaches and suggestions to help resolve technological problems, Tracing the history and progress of specific technologies (areas may be found that are not patented and could provide valuable intellectual property). To avoid litigation expenditure
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For Researchers Stops re-inventing the wheel and spending a lot of money doing it; Avoiding wasted legal costs in pursuing patents for “old” technology; Avoiding potential infringement situations; Discovering research ideas and solving problems; Find a solution to a technical problem; Predicting hot-areas of research that can impact on current products and those that are in the development stage
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For Researchers Patent documents also have increasing technical and strategic importance - approximately 25% of all scientific or technical publications produced each year originate in patent offices around the world
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Different Stages for Carrying out Patent Information Search by Researchers
Before the start of R & D Project stops in re-inventing the wheel gets a clear and broad picture of the state_of_art lists shortcomings/drawbacks in the state_of_art After the start of R & D Project lists solution to the technical problem establishes the novelty After the completion of the R & D project helps in drafting the Patent Document helps in either broadening or narrowing down claims
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COMMONLY USED FREE TO USE PATENT DATABASES
Sources For Patent Information Search COMMONLY USED FREE TO USE PATENT DATABASES Search site Organisation India US Patent & Trademarks Office World Intellectual Property Organisation European Patent Office IP Australia (Australian Government) Intellectual Property of Singapore Japan Patent Office Canadian Intellectual Property Office Intellectual Property Office, United Kingdom Intellectual Property Office, New Zealand Google Inc. FPO IP Research & Communities Netherlands Patents Office
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FEE BASED COMMERCIAL PATENT DATABASES
Sources For Patent Information Search FEE BASED COMMERCIAL PATENT DATABASES Search site Organisation WIPS, KOREA DELPHION PATOLIS DERWENT MICROPATENT QPAT DIALOG WEB IFI Plenum Corporation Lexis-Nexis Questel-Orbit STN
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Content of the Patent Document
Bibliography Description Drawings and workable example Prior art Current invention Claims
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How to perform search Before starting a patent search, the user must reach a point of concise understanding of the claimed invention. For this purpose, it is helpful to practice summarizing the invention to its most fundamental elements. This can be achieved by attempting to describe the claimed invention in a few sentences, with focus on the nature and novelty of the invention. This exercise “filters” the bulk of text used in the patent draft and reduces the invention to its most elementary keywords.
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Types of Search Strategies:
There are 4 basic strategies that are commonly used to search the patent literature Classification Search Only Keyword Search Only Classification AND Other Parameters Search Others (Citations, Inventor and assignee ..)
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Keyword search Advantages: Keyword searches are quick and don't require highly specialized search skills. Keyword searches are also most appropriate for very recently developed technology for which classifications are not yet developed. Disadvantages: Keyword searches depend solely upon the searcher's ability to anticipate and guess at how an inventor may have described an invention. Older patents must be searched by classification or patent number
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Classification search
Advantages: Since classification searching relies on the features of a patent, rather than the words used to describe the patent, all patents that utilize specific features will be returned as a search result. Disadvantages: Searchers new to the concept of classification searching will ideally spend time learning how to find and use classifications to retrieve patents. New searchers may have difficulty finding patents in very new technological areas
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Extract keywords from invention description
Compose new Boolean search command Extract keywords from invention description Save patent as text file Last abstract to read? Last class to search? Assemble search results Review list of patent titles returned Titles not relevant, or too many titles (narrow search scope), or too few titles (widen search scope) Read next patent abstract Relevant prior art? Not OK Titles OK No Yes
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The 7-Step U. S. Patent Search Strategy
Classification Brainstorm keywords related to the purpose, use and composition of the invention. 2. Look up the words in the Index to the U.S. Patent Classification to find potential class/subclasses. 3. Verify the relevancy of the class/subclasses by using the Classification Schedule in the Manual of Classification . 4. Read the Classification Definitions to verify the scope of the subclasses and note “see also” references.
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Access Full-Text 5. Search the Issued Patents and the Published Applications databases by “Current US Classification” and access full-text patents and published applications. Review and References 6. Review the claims, specifications and drawings of documents retrieved for relevancy. 7. Check all references and note the “U.S. Cl.” and “Field of Search” areas for additional class/subclasses to search.
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Step 1: Brainstorming The first step in our patent search involves brainstorming. Create a list of words describing your idea/ invention. Think of action words as well as nouns. Be sure to list synonyms. Use the alphabetical subject index for assistance. To perform a thorough search, ask the following questions: How does the invention function? What’s its purpose? What is it used for? Are there any special uses? What is it made of? Is it material or method? What effect does it have? What’s the end result?
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Classification based search generally involves the progressive selection of concepts to determine which documents are appropriate for any given requirement. United State patent Classification system is based on industrial classification; classification by utility –proximate function and by product or effect produced and structure classification in short based on the technology disclosed in US patents
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Case Study - USPTO Objective
Case Study to find usage of Latex (natural rubber) in cement concrete (combination of building material) Suggested Solution Step1. Use the terms latex and cement concrete to build the initial search query Step2. latex : latex, natural rubber Cement concrete: concrete, cement, grout, mortar, composite, building material
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Step 2 : Index to USPC page
Using the HTML version on the Index to USPC is recommended because the HTML version supports linking to the next step in the search process.
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Step 3 : looking up the classification code
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Step 4 : classification Definitions
Think about that plus sign that we saw in the Index of Classification. Remember to look around subclass
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This is where the working definitions for all utility subclasses are located. Occasionally, you will find suggestions for other subclasses to consider.
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Step 5 : Access Patent Document
Input is USPC=CCL/521/83 Output: 115 references
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Input is USPC=CCL/521/83 and Rubber
Output: 54 references
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Input is USPC=CCL/521/83 and concrete
Output: 42 references
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Input is USPC=CCL/521/83 and concrete and rubber
Output: 18 references
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Input is USPC=((CCL/521/83 and concrete) and Rubber)
Output: 18 references
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Step 6 : Review the Claims
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Step 7 : Retrieve and Review Cited Reference
It is found that there in no patent filed in the area of invention in USPTO
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In Brief Identify the parts of an invention.
Search the Index to the U.S. Patent Classification Use the Manual of Classification Consult the Patent Classification Definitions Review the Subclass Listing. Locate patents by number . Obtain complete patent document.
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Keyword serach only Input is USPC=(cement and Rubber)
Output: references
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Input is USPC=(latex or rubber) and (concrete or cement or grout or mortar)
Output: references
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Input is USPC=ACLM/(latex or rubber) and
Input is USPC=ACLM/(latex or rubber) and ACLM/ (concrete or cement or grout or mortar) Output: 1786 references
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My experience 1 Start with the issued patents and start with using some keywords, which are relevant to your invention. You may use either the quick search method or the advanced search method. Be sure to study the help pages . 2. You will get some results and by using more relevant keywords you can reduce the number of patent titles to a minimum of about 40. Please keep a record of all the keywords that you used.
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3. Please note all the classifications of cited in these patents
3. Please note all the classifications of cited in these patents. Note both the US Classification and the International Classification of Patents. This is a must. 4. Repeat the patent search with the Published Applications using Again record the search queries and the classifications. 5. Now study the classifications that are repeated time and again in your results and try to narrow down the invention to some particular classifications. It is not very difficult to do although it will take some time
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Patent searching is an iterative task.
To do a good search you must determine how your invention works, NOT how you will use your invention.
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