1. How to do your own patent search
What is a patent?
Design vs. Utility vs. Plant
What can I patent?
Why do my own search?
What tools can I use to search?
Some approaches
16 Nov 2004
Patents and Searching
Heather Gallant

2. What is a patent?
A patent is a property right granted to the inventor by the patent office.
“…the right to exclude others from making, using, offering for sale, or selling…” or importing the invention into the jurisdiction
Limited by the term (17 to 20 years), the scope of the patent, the jurisdiction, and subject to the rights of other patents and agreements.
Once issued, patentee must enforce the rights.
16 Nov 2004
Patents and Searching
Heather Gallant

3. How do I get a patent? To get a patent on an INVENTION,
You must have an invention that is patentable
You must describe the invention and apply for a patent
The patent office must examine the patent (and criticize it) and hopefully grant/issue the patent
… and you must pay fees and argue/justify/clarify your invention through the prosecution process
16 Nov 2004
Patents and Searching
Heather Gallant

4. What can I Patent? YOU must
be the inventor; or
have the ownership assigned to you; or
have the right to patent assigned or granted to you
YOU (or your agent) must apply for a patent
Describe the invention in sufficient detail to allow others skilled in the art to duplicate it
16 Nov 2004
Patents and Searching
Heather Gallant

5. What is patentable?
The invention must fall into one of five statutory classes if applying for a utility patent:
Process (methods and software processes)
Machines (conventional and software machines)
Manufactured Products (nonmoving parts)
Compositions of Matter
(chemicals, alloys, and pharmaceuticals)
New Uses of Any of the Above
16 Nov 2004
Patents and Searching
Heather Gallant

6. Patentability USEFUL NOVEL (new) Non-OBVIOUSNESS useful purpose
operativeness (invention must serve purpose)
NOVEL (new)
Not known or used by others
Different from prior art
Not patented or publicly disclosed previously
1 year grace period in US and Canada
most other jurisdictions have absolute novelty requirement
Non-OBVIOUSNESS
“sufficiently different from what has been used or described before that it may be said to be nonobvious to a person having ordinary skill in the area of technology related to the invention”
16 Nov 2004
Patents and Searching
Heather Gallant

7. Patentability can be difficult to determine
May need expert analysis or opinion
Negative patentability assessment saves$
Can refocus work to decrease risk
Can abandon risky/non-patentable research
16 Nov 2004
Patents and Searching
Heather Gallant

8. Exclusions to patentability
inventions useful solely in the utilization of special nuclear material or atomic energy for atomic weapons (Atomic energy act US, 1954)
16 Nov 2004
Patents and Searching
Heather Gallant

9. Other exclusions Superior material for inferior
Change in size, form, or shape
Mere adjustabilty
Diminution of parts
Omission of parts
Use of old art for another purpose Mere aggregation
Laws of nature
Physical phenomena
Abstract ideas
Literary, dramatic, musical, and artistic works (these should be copyright protected)
Inventions which are against the laws of nature (ex. perpetual motion machines)
Inventions whose only use is for illegal purposes (ex. torture devices)
16 Nov 2004
Patents and Searching
Heather Gallant

10. Patent Myths Patents are all valuable
<2% of patents have commercial value
Patented inventions are verified by the gov’t
Provisional patents are valid for 1 year
Sets priority date, need to convert to regular appl
Provisional patent applications just need to describe the concept
Need to enable the invention, claims useful
You can patent an idea
A patent can be enforced for 20 years
Issuance to expiry: 17 years in US
16 Nov 2004
Patents and Searching
Heather Gallant

11. Myths, con’t
A patent give the owner the right to make, use, sell the invention
Gives enforcement rights
A US patent is honoured world-wide
Jurisdiction specific
A patent protects an invention
Owner must enforce rights
The first thing you should do on getting an inventive idea is file a PATENT
Save your money, don’t disclose, use CDAs, keep good records, make a business decision to file
16 Nov 2004
Patents and Searching
Heather Gallant

12. Why do my own patent search?
Cheaper than hiring a pro at first
Familiarize with similar patents
Familiarize with patent conventions
Familiarize with competitive products
Learn about patent process, categorization
Focus on new areas for your research
Rule out known/similar inventions
16 Nov 2004
Patents and Searching
Heather Gallant

13. Tools http://www.lib.utexas.edu/engin/patent-tutorial/appsearching.htm
Tutorial for USPTO searching
TIFF viewer for USPTO images
(epo keyword)
(cipo)
(multi-jurisdictional, keyword)
16 Nov 2004
Patents and Searching
Heather Gallant

14. Where to start Brainstorm, break the invention down
potentially patentable aspects of the invention
Check the classification system
Search for similar patents
Search by keyword (>1976)
Search your competitors, heroes
16 Nov 2004
Patents and Searching
Heather Gallant

15. Questions to ask yourself
What does the invention do?
What is the end result?
How does it work?
What is it made of?
What is it used for?
What problem(s) does it solve?
16 Nov 2004
Patents and Searching
Heather Gallant

16. Review patents or potential interest
Browse titles, view lots of documents
Use classification and search within sub/classes
Link to classification list (P)
Link to published applications (A)
Use html display of individual patents
“find” keywords in text
Use IMAGE (tiff viewer) to print
If extra large docs, buy from micropatent
16 Nov 2004
Patents and Searching
Heather Gallant

17. Tips Patent searching is iterative (how invention works)
Patent language and classification is difficult
Legal, technical, merely descriptive (keywords may be useless)
"Four rectangular uprights supporting a planar surface" describes a table
Search published applications and issued patents
Search broad date range (within reason)
Search USTPO, CIPO and EPO
Use ESPACENET if your keywords are good
Search classifications using keywords
Keep a list of terms, classes searched
16 Nov 2004
Patents and Searching
Heather Gallant

18. Tips, con’t Negative results are difficult to justify.
You should at least find related stuff.
Allow several days or more and several sessions for searching
Ask friends, colleagues, students to search, too
Consider this is a preliminary search
Consider investing in a professional search
Poke around USPTO, CIPO websites for tips, info
Don’t neglect a market search! Literature search!
Google searching!
16 Nov 2004
Patents and Searching
Heather Gallant