Patent Searching for Entrepreneurs

Patent Searching
for
Entrepreneurs.
Copyright FLYNN IP LAW 2021
FLYNNipLAW.com
1

Patent Searching for
Entrepreneurs.
Presented January 27, 2021
Duke University
Student Founders Program (Product Track)
FLYNNipLAW.com
2

GOALS
• I want to expose you to a range of tools.
• Watching my slide set is passive and will
only get you part-way there.
• Play with the tools. This is a skill. The
only way to get better is to play with the
tools.
FLYNNipLAW.com
3

There are lots of reasons to search
• Two Biggest reasons
• 1) Patentability
Is an invention really different from the
prior art and
• 2) Freedom to Operate.
Are there more basic patents that have not
expired that block you from entering the market?
Basic bike patent might block fancy mountain bike.
FLYNNipLAW.com
4

Third Reason --Pure Curiosity
• The patent system is effectively the Wikipedia
of technology.
• Patent applications are supposed to contain
enough information for a person with relevant
skills make and use the invention.
• So this should be a first tier tool when you are
doing research in a new area. See how a copy
machine sorts or an ultrasound scanner
works.
FLYNNipLAW.com
5

Patentability vs.
Freedom-to-Operate
FLYNNipLAW.com
6

Bicycle
Example
• Betty invents simple
Betty bicycle in 2016.
• Gets Patent
• Covers simple two
wheeled, inline, foot
powered, chain driven,
vehicle that you steer
by rotating a handle
bar connected to a
front wheel.
• Mary invents
Mountain Bike in 2020
• Mary can get a patent
for a bike features
such as 18 gears,
shock-absorbing
suspension, added
toughness for
jumping, et cetera.

But who can make what?
• Betty cannot make
Mountain Bikes as they
are covered by Mary‘s
patents.
• Betty can make her own
simple Betty Bicycles.

But who can make what?
• Mary cannot make
either the simple
“Betty Bicycle” or a
Mountain Bike as
the simple
• Betty Bicycle patent
covers both.

Mary’s Mountain Bikes
• Patentability
Several of the
improvements in
the mountain bike
can obtain patent
claims over
Betty’s Bike.
Freedom-to-Operate
FLYNNipLAW.com
11
One or more claims from the
Betty’s Bike Patent cover a
basic 2 wheel, inline, chain
driven, vehicle, steered by
rotating the front wheel by a
handle bar.

What Can
You Do?
While you
cannot reduce
the risk of being
surprised to
zero,you
can reduce the
risk by doing
some looking.
FLYNNipLAW.com
12

FLYNNipLAW.com
13

USPTO Quick Search
FLYNNipLAW.com
14
You can specify two fields and
a connector AND / OR and ANDNOT

Assume you heard that a
NC company has an
interesting patent related
to bicycles.
FLYNNipLAW.com
15

Dropdown list lets you pick fields
FLYNNipLAW.com
16

But Bicycle may be
just mentioned in passing
FLYNNipLAW.com
17

That’s the danger of
text searching
entire documents.
We will cover ways to focus on
patents that are focused on a
term rather than just
mentioning the term.
FLYNNipLAW.com
18

We can tighten up
• We can insist that bicycle is in title (often too
narrow) or in the abstract or in the claims
(claims sometimes use weird terms).
FLYNNipLAW.com
19

This is a narrower set
& the links are live
FLYNNipLAW.com
20

FLYNNipLAW.com
21
PTO shows you text to start with

PTO Shows TIF Images when you
hit
FLYNNipLAW.com
22

Hit to get a PDF of patent
FLYNNipLAW.com
23

You can get a PDF from http://pat2pdf.org/
FLYNNipLAW.com
24

Combo Plan
• If it is a patent I want to study. I will take the
text from the PTO site and put it into a word
document.
• I will get the PDF too.
• Then I can annotate the PDF of the figures using
Adobe Acrobat and place the annotated figures
into the text.
• I can use WORD Replace to find words of
interest and replace with LARGE WORDS IN
COLOR
FLYNNipLAW.com
25

USPTO ADVANCED SEARCH
• Allows max control to look for specific terms
in specific fields. May be useful if you have an
inventor of interest named Bass or some
other common noun.
FLYNNipLAW.com
26

To search for design patents I did for
NC inventors…
FLYNNipLAW.com
27

Sample of PTO Fields
FLYNNipLAW.com
28

Click on a field to get the syntax
FLYNNipLAW.com
29

A good way to limit search is to
look for keywords in fields.
FLYNNipLAW.com
30
Field(s) searched Number found with Spine
Entire Patent 42,267 – too many –
some of this may be junk
Claims only 8,846
Abstract only 5,397
Claims or Abstract 10,455
Title Only 990 – title is too short
to be a good search field

10,000 is still too much
• But you would want to combine
search for patents with a focus on
the spine with other search terms or
date limits to further limit the
search.
• Using the results from a search just
of titles would not be the way I
would do it. Copyright FLYNN IP LAW 2021
FLYNNipLAW.com
31

Can nest and stack commands
• Results of Search in US Patent
Collection db for:
(((ABST/spine ANDNOT
ABST/Book) AND (ACLM/Spine
ANDNOT ACLM/book)) AND
fusion): 796 patents.
Hits 1 through 50 out of 796
• Allows you to find patents with spine in the abstract
and in the or claims but not book spine patents.
Interested in spine fusion but not spine fusion for books.
FLYNNipLAW.com
32

Results look good
FLYNNipLAW.com
33

Difference between
Issued Patent and
Published Patent
Application.
FLYNNipLAW.com
34

Issued Patent is the Goal
• Until it expires or lapses, a patent can allow
you to go to court to stop others.
• Looks like this. Notice “Date of Patent” and a
number that does not start with a year.
FLYNNipLAW.com
35

A Patent Application Hopes to
Become a Patent.
• Might already be a patent. May someday be a
patent. May have already died trying.
• Looks like this. Notice “Date of Patent” and a
number that does not start with a year.
FLYNNipLAW.com
36

Other Major Search tool is Google
• It is worth playing with both
search tools as each as some
features not found in the other.
• Examples -- Google allows easy
pulling of PDF and shows updates
to legal status.
FLYNNipLAW.com
37

Searching On Google Patent
• https://patents.google.com/
FLYNNipLAW.com
38

On Google or USPTO
use quotes for phrases
Searching for hood latch
43,852 hits
Searching for “hood latch”
4327 -- 90+% reduction
FLYNNipLAW.com
39

Limiting Search to Just
US Patents & Published Apps.
FLYNNipLAW.com
40
Drop down box
for Patent Office –
choose US

Focus on Just Issued Patents
FLYNNipLAW.com
41
Set filing status to
“Grant” for issued
patents only
Now just 734

Sort Order
FLYNNipLAW.com
42

If you sort by date
•You may get patents which
mention a hood latch on
page 23 but do not claim a
hood latch.
•But sometimes date is key
FLYNNipLAW.com
43

Any Search You Run will Be
imperfect and Miss something
• Some patents were translated into
English and use unusual terms rather
than the ones we might use.
• Some terms are simply arbitrary.
Example the modules in some computer
applications.
–A testing module for some person may be
the verification engine for someone else.
• Terms used in claims can be really odd.
FLYNNipLAW.com
44

You may be tempted to write…
• The Mother of all Searches.
• Every possible synonym and use lots of OR
clauses to search the entire patent so as to
not miss anything.
•DO NOT DO THIS.
FLYNNipLAW.com
45

Life is too Short
• If you set your search net so fine that it
collects everything of possible interest,
it will also collect 10 to 1000 irrelevant
items for every relevant one.
• When you see you have 10,000 hits,
you will give up before you check all
10,000
FLYNNipLAW.com
46

When Searching – Just get the big
fish with a coarsenet
FLYNNipLAW.com
47

Use A Coarse Net and Grab Just the
BIG FISH.
• The Big Fish will lead you the others
of consequence through
• Backward Chaining – finding patents
from the Past
• Forward Chaining – finding patents
issued after the patent you found.
FLYNNipLAW.com
48

Backward Chaining
FLYNNipLAW.com
49

Backwards Chaining (Google)
FLYNNipLAW.com
50

Backward Chaining
FLYNNipLAW.com
51

US3600018 Forward Chaining
FLYNNipLAW.com
52

Picked Cited by –
US20060099838A1
FLYNNipLAW.com
53

Note this is a published application
not a patent.
FLYNNipLAW.com
54
The USPTO would not show this not yet
issued application as citing the original
patent but they would show patents
that cite the original patent.

USPTO – Chaining
FLYNNipLAW.com
55
Search and pull up the HTML for the patent

Backwards Chaining USPTO
FLYNNipLAW.com
56
PTO site does not show which
references were cited by the
Examiner vs listed by the
applicant but the PDF does

FLYNNipLAW.com
57
See the Asterisks for References used By the USPTO
These are likely to be the more important references
(This PDF example is unrelated to hood latches)

USPTO Forward Chaining
FLYNNipLAW.com
58
Use Referenced By to have the
USPTO formulate a search for
newer patents that reference
the patent you are viewing.

USPTO Finds 6 US Patents
FLYNNipLAW.com
59
Google listed some foreign patents or
applications but did not show the US Design
Patent. Each system will find slightly
different results.

Chaining forms a Net
• When you find a half dozen really
relevant patents and backward chain
from them, you will find more that are
relevant and some that have a feature
you don’t care about.
• When you forward chain from the
original 6 and the ones found in
backward chaining, you will find more.
FLYNNipLAW.com
60

Continue till it stops yielding
new patents.
• Backward chain the new
patents.
• Forward chain what you find.
• Eventually, you will stop
finding new relevant patents
FLYNNipLAW.com
61

What if you find a Published App
that claims the “wheel”
•Your mountain bike is going
to use two wheels.
•You may be concerned as a
patent on the wheel will be
a problem for your plans.
FLYNNipLAW.com
62

Do you want to
check to see if the
USPTO has
noticed that the
Roman chariots
are prior art as
they had wheels?
FLYNNipLAW.com
63

You can check using
USPTO PUBLIC PAIR
• For Any Published Application
–You can see the status
–You can see and download all
the documents from the
applicant to the USPTO and
from the USPTO to the
applicant.
FLYNNipLAW.com
64

FOOTNOTE
• If the applicant opts out of publication,
then you see NOTHING till the patent
issues.
• Non-publication is a good plan for a small
US client that does not plan to seek
patents out of the US. (highly disruptive)
• But this is beyond the scope of the
program today.
FLYNNipLAW.com
65

USPTO PUBLIC PAIR
• PUBLIC – means anyone can use.
• PRIVATE PAIR is a system for folks with
special access codes like Patent Attorneys.
• PRIVATE PAIR adds a few features that are of
use when managing a patent for a client, like
record of fees paid, an estimate of the first
Office Action, and some other data.
FLYNNipLAW.com
66

Process
• http://portal.uspto.gov/pair/PublicPair
• Then prove you are not a machine
FLYNNipLAW.com
67

Let’s Search for the App listed in
Google Forward Chaining
FLYNNipLAW.com
68

FLYNNipLAW.com
69

This one died.
FLYNNipLAW.com
70

We can see the sequence
FLYNNipLAW.com
71

We can pull the documents
FLYNNipLAW.com
72

We can see what the PTO argued
FLYNNipLAW.com
73

We can see if they have a
related application pending
FLYNNipLAW.com
74
They tried, but that one died too.
Sometimes we can jump to that case.

We can see in PAIR who owns the
patent or application.
FLYNNipLAW.com
75

We can Check to see what else
they own.
FLYNNipLAW.com
76
http://assignment.uspto.gov/
Pick Assignee name search

Search for Assignee
FLYNNipLAW.com
77

Results -- 10 assets
FLYNNipLAW.com
78

Drill down to see what they have
FLYNNipLAW.com
79
An application on an Excavator Bucket.

From this Assignment Page…
• Can jump to the USPTO page for
the published application.
• Can jump to the USPTO page for
the issued patent.
• Can pull up copies of the
assignments.
FLYNNipLAW.com
80

MAINTENANCE FEES
FLYNNipLAW.com
81
United States utility Patents need to
be renewed every 4 years or they
expire.
Sometimes it is useful to find out if
the maintenance fees have been
paid to know if a patent is still in
force.

In order to check status of
Maintenance Fees,
you will need both patent number &
application number
FLYNNipLAW.com
82

Copyright FLYNN IP LAW 2012 83
All fees paid --so this patent did not lapse early

Searching Outside of US.
Start with PCT applications
FLYNNipLAW.com
84
https://patentscope.wipo.int/search/en/search
.jsf
https://patentscope.wipo.int/se
arch/en/search.jsf

Simple Search of Front Page of
Application
FLYNNipLAW.com
85

Hit then Field Combination
FLYNNipLAW.com
86

http://worldwide.espacenet.com/
An alternative search tool
FLYNNipLAW.com
87

FLYNNipLAW.com
88

FLYNNipLAW.com
89

Art Classifications
FLYNNipLAW.com
90
As children we learned the Dewey
Decimal System so we could find
the books on dinosaurs which were
stored on a different shelf from the
books on volcanos or books on the
Civil War.

Patents are Grouped too
FLYNNipLAW.com
91
The pile of patents for bicycles is stored
separately from the pile of patents for hood
latches.
Art Classes were Really important when someone
looked at the physical piles of patents.
Now with electronic searching, it is less important
BUT can be a useful filter.

Many Different Patent Classification
Systems
FLYNNipLAW.com
92
US had its own system which it tweaked
over the years. So our old Hood Latch
patent may not use the same art class
codes as new hood latch patent.

FLYNNipLAW.com
93
Same
Class
Code

It takes time to learn the codes
• 292.59 from our hood latches is actually
FLYNNipLAW.com
94

Sometimes you can discern the
codes to use based on your best
patent finds.
FLYNNipLAW.com
95

FLYNNipLAW.com
96
Current US Classification (CCL)
This field contains the original and cross-reference
classes in which the patent was classified at the time
of the most recent PTO Master Classification File.
TIP: If you are searching for a specific class and
subclass, you should phrase your query as
ccl/class/subclass, for example, ccl/2/5. Some
subclasses can contain decimal and alpha modifiers
(for example, 427/2.31 or 427/3A).
TIP: If you are searching for the entire contents of a
specific class without specifying a particular subclass,
you should use right truncation, as in ccl/427/$.

This found 8,231,149
FLYNNipLAW.com
97

Class Codes
•Not my favorite way to
search
•But can be useful to focus
search if text terms alone
are not getting it done.
FLYNNipLAW.com
98

Moving to CPC Codes
(to be used by US and Europe)
• You can browse USPC or CPC starting through
the code hierarchy.
• http://www.uspto.gov/web/patents/classificat
ion/cpc.html
• http://www.uspto.gov/web/patents/classificat
ion/selectnumwithtitle.htm
FLYNNipLAW.com
99

USPTO Teaches a Patent Search
Process with Focus On Search
Classes
FLYNNipLAW.com
100

Special USPTO Tools
• There are special search tools that are
used by the USPTO Patent Examiners to
do their work.
• Presumably these offer some advantages
over the tools I shared with you.
• NOTE – The USPTO has equipped certain
libraries with access to these tools and
specially trained librarians.
FLYNNipLAW.com
101

NCSU is one such place
• The Patent Librarian can
• provide a brief orientation to available materials and
resources, as well as general guidance on searching
patents and trademarks;
• help you identify historical patents and inventors using
print materials, such as Patent Indexes and Official
Gazettes;
• contact experts at the USPTO for specialized questions
or research needs beyond the scope of the Libraries'
service;
• point you to online tutorials and other reliable and
informative web resources.
FLYNNipLAW.com
102

Contact Info
FLYNNipLAW.com
103

Time for Questions
FLYNNipLAW.com
104
KEF@FLYNNipLAW.com

Help Build
The Next Version of this Talk
• Send an email to KEF@FLYNNipLAW.com
• Subject – Patent Search Talk
• Tell me what you wished I spent more time
on.
• Tell me what you wished I skipped.
• Tell me what you felt was confusing.
FLYNNipLAW.com
105

Patent Searching for Entrepreneurs

Recommended

Recommended

More Related Content

What's hot

What's hot (8)

Similar to Patent Searching for Entrepreneurs

Similar to Patent Searching for Entrepreneurs (20)

Recently uploaded

Recently uploaded (20)

Patent Searching for Entrepreneurs