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Patent Searching for Entrepreneurs

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Gone are the days when the only way to find relevant patents was to hire a patent attorney. There are many public tools that allow a person to:

* Find Relevant Patents in the US and Abroad.

* Find Published Applications that are in the pipeline but not yet Issued.

* Look to see whether a pending application is heading towards allowance or trash heap.

* Automatically monitor for relevant publications of patent applications.

* Check to see who owns relevant patents.

Published in: Law
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Patent Searching for Entrepreneurs

  1. 1. Patent Searching for Entrepreneurs. Copyright FLYNN IP LAW 2016 1
  2. 2. Patent Searching for Entrepreneurs. Presented October 27, 2016 At RTP FRONTIER to Triangle TechBreakfast Folks Copyright FLYNN IP LAW 2016 2
  3. 3. GOALS • I want to expose you to a range of tools. • We won’t have much time to play with things as we have a lot of ground to cover. • Play with the tools and then catch me after the next TechBreakfast to ask for the next level of tips in using a particular tool. Copyright FLYNN IP LAW 2016 3
  4. 4. 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. Copyright FLYNN IP LAW 2016 4
  5. 5. Bicycle Example • Betty invents simple Betty bicycle in 2010. • Gets Patent • Covers simple two wheeled, inline, foot powered, chain driven, vehicle. • Mary invents Mountain Bike in 2016 • She can get a patent for a bike features such as 18 gears, shock-absorbing suspension, added toughness for jumping, et cetera.
  6. 6. But who can make what?
  7. 7. But who can make what? • Betty cannot make Mountain Bikes as they are covered by Mary‘s patent. • Betty can make her own simple Betty Bicycles.
  8. 8. 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.
  9. 9. Mary’s Mountain Bikes • Patentability Several of the improvements in the mountain bike can obtain patent claims over Betty’s Bike. Freedom-to-Operate Copyright FLYNN IP LAW 2016 9 One or more claims from the Betty’s Bike Patent cover a basic 2 wheel, chain driven, vehicle, steered by rotating the front wheel by a handle bar.
  10. 10. What Can You Do? While you cannot reduce the risk of being surprised to zero,you can reduce the risk by doing some looking. Copyright FLYNN IP LAW 2016 10
  11. 11. • Can search Copyright FLYNN IP LAW 2016 11
  12. 12. USPTO Quick Search Copyright FLYNN IP LAW 2016 12 You can specify two fields and a connector AND / OR and ANDNOT
  13. 13. Assume you heard that a NC company has an interesting patent related to bicycles. Copyright FLYNN IP LAW 2016 13
  14. 14. Dropdown list lets you pick fields Copyright FLYNN IP LAW 2016 14
  15. 15. The list are live links Copyright FLYNN IP LAW 2016 15 Snow plow scoop cart sounds interesting…
  16. 16. Snow Plow/Scoop Cart • http://patft.uspto.gov/netacgi/nph- Parser?Sect1=PTO2&Sect2=HITOFF&p=1&u=% 2Fnetahtml%2FPTO%2Fsearch- bool.html&r=4&f=G&l=50&co1=AND&d=PTXT &s1=(%22NC%22.INST.)&s2=bicycle&OS=IS/N C+AND+bicycle&RS=IS/NC+AND+bicycle Copyright FLYNN IP LAW 2016 16
  17. 17. Copyright FLYNN IP LAW 2016 17 PTO shows you text to start with
  18. 18. PTO Shows TIF Images when you hit Copyright FLYNN IP LAW 2016 18
  19. 19. This is not really a bicycle patent • But it uses the word bicycle in the text. • The wheels can be of the bicycle or garden type but preferably with sealed bearings, and fabricated with aluminum or aluminum alloy, because the aluminum bearing resists well rust and fatigue. Copyright FLYNN IP LAW 2016 19
  20. 20. That’s the danger of text searching entire documents. We will cover ways to focus on patent that are directed to a term rather than just mention it. Copyright FLYNN IP LAW 2016 20
  21. 21. You can get a PDF from http://pat2pdf.org/ Copyright FLYNN IP LAW 2016 21
  22. 22. 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 Copyright FLYNN IP LAW 2016 22
  23. 23. 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. Copyright FLYNN IP LAW 2016 23
  24. 24. To search for design patents I did for NC inventors… Copyright FLYNN IP LAW 2016 24
  25. 25. PTO Fields & Syntax Copyright FLYNN IP LAW 2016 25
  26. 26. Click on a field to get the syntax Copyright FLYNN IP LAW 2016 26
  27. 27. A good way to limit search is to look for keywords in fields. Copyright FLYNN IP LAW 2016 27 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
  28. 28. 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 2016 28
  29. 29. 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. Copyright FLYNN IP LAW 2016 29
  30. 30. Results look good Copyright FLYNN IP LAW 2016 30
  31. 31. 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 pulling PDF and shows updates to legal status. Copyright FLYNN IP LAW 2016 31
  32. 32. Searching On Google Patent • https://patents.google.com/ Copyright FLYNN IP LAW 2016 32
  33. 33. On Google or USPTO use quotes for phrases Searching for hood latch 31,878 hits Searching for “hood latch” 2,296 -- 90+% reduction Copyright FLYNN IP LAW 2016 33
  34. 34. Limiting Search to Just US Patents & Published Apps. Hit the pencil to get options Hit MOREto get more options Set Patent Office to US Now just 769 hits. Copyright FLYNN IP LAW 2016 34
  35. 35. Focus on Just Issued Patents Copyright FLYNN IP LAW 2016 35 Set filing status to “Grant” for issued Now just 580
  36. 36. Sort Order Copyright FLYNN IP LAW 2016 36
  37. 37. 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 Copyright FLYNN IP LAW 2016 37
  38. 38. 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. Copyright FLYNN IP LAW 2016 38
  39. 39. 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. Copyright FLYNN IP LAW 2016 39
  40. 40. 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 Copyright FLYNN IP LAW 2016 40
  41. 41. When Searching – Just get the big fish with a coarsenet Copyright FLYNN IP LAW 2016 41
  42. 42. 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. Copyright FLYNN IP LAW 2016 42
  43. 43. Backward Chaining Copyright FLYNN IP LAW 2016 43
  44. 44. Backwards Chaining (Google) Copyright FLYNN IP LAW 2016 44
  45. 45. Backward Chaining Copyright FLYNN IP LAW 2016 45
  46. 46. US3600018 Forward Chaining Copyright FLYNN IP LAW 2016 46
  47. 47. Picked Cited by – US20060099838A1 Copyright FLYNN IP LAW 2016 47
  48. 48. Note this is a published application not a patent. Copyright FLYNN IP LAW 2016 48 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.
  49. 49. USPTO – Chaining Copyright FLYNN IP LAW 2016 49 Search and pull up the HTML for the patent
  50. 50. Backwards Chaining USPTO Copyright FLYNN IP LAW 2016 50 PTO site does not show which references were cited by the Examiner vs listed by the applicant but the PDF does
  51. 51. Copyright FLYNN IP LAW 2016 51 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)
  52. 52. USPTO Forward Chaining Copyright FLYNN IP LAW 2016 52 Use Referenced By to have the USPTO formulate a search for newer patents that reference the patent you are viewing.
  53. 53. USPTO Finds 6 US Patents Copyright FLYNN IP LAW 2016 53 Google listed some foreign patents or applications but did not show the US Design Patent. Each system will find slightly different results.
  54. 54. 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. Copyright FLYNN IP LAW 2016 54
  55. 55. 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 Copyright FLYNN IP LAW 2016 55
  56. 56. 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. Copyright FLYNN IP LAW 2016 56
  57. 57. Do you want to check to see if the USPTO has noticed that the Roman chariots are prior art as they had wheels? Copyright FLYNN IP LAW 2016 57
  58. 58. 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. Copyright FLYNN IP LAW 2016 58
  59. 59. 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. Copyright FLYNN IP LAW 2016 59
  60. 60. 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. Copyright FLYNN IP LAW 2016 60
  61. 61. Process • http://portal.uspto.gov/pair/PublicPair • Then prove you are not a machine Copyright FLYNN IP LAW 2016 61
  62. 62. Let’s Search for the App listed in Google Forward Chaining Copyright FLYNN IP LAW 2016 62
  63. 63. Copyright FLYNN IP LAW 2016 63
  64. 64. This one died. Copyright FLYNN IP LAW 2016 64
  65. 65. We can see the sequence Copyright FLYNN IP LAW 2016 65
  66. 66. We can pull the documents Copyright FLYNN IP LAW 2016 66
  67. 67. We can see what the PTO argued Copyright FLYNN IP LAW 2016 67
  68. 68. We can see if they have a related application pending Copyright FLYNN IP LAW 2016 68 They tried, but that one died too. Sometimes we can jump to that case.
  69. 69. We can see in PAIR who owns the patent or application. Copyright FLYNN IP LAW 2016 69
  70. 70. We can Check to see what else they own. Copyright FLYNN IP LAW 2016 70 http://assignment.uspto.gov/ Pick advanced search
  71. 71. Search for Assignee Copyright FLYNN IP LAW 2016 71
  72. 72. Results -- 10 assets Copyright FLYNN IP LAW 2016 72
  73. 73. Drill down to see what they have Copyright FLYNN IP LAW 2016 73 A design patent on a excavator rigging socket
  74. 74. For Issued Patents or Published Applications You can Order a copy of the Assignment Copyright FLYNN IP LAW 2016 74 37 CFR 1.12 - Assignment records open to public inspection.
  75. 75. MAINTENANCE FEES Copyright FLYNN IP LAW 2016 75 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.
  76. 76. In order to check status of Maintenance Fees, you will need both patent number & application number Copyright FLYNN IP LAW 2016 76
  77. 77. Copyright FLYNN IP LAW 2012 77 https://ramps.uspto.gov/eram/patentMaintFees.do Select
  78. 78. So the 4 year fee should have been paid. Copyright FLYNN IP LAW 2016 78
  79. 79. Check 4 Year Payment Window Copyright FLYNN IP LAW 2016 79 So this maintenance fee was paid and the patent is still in force. If the patent owner did not renew the patent by paying the maintenance fee, then the patent expires. There is a liberal opportunity to pay this late, so get your patent attorney to look at a situation where you find that a key patent to your FTO analysis has expired.
  80. 80. http://www.freshpatents.com/ Copyright FLYNN IP LAW 2016 80
  81. 81. 2016-03-02 new “spine” applications Copyright FLYNN IP LAW 2016 81
  82. 82. Buggy Result Copyright FLYNN IP LAW 2016 82 20160050954 – Novel confectionery with improved crunchiness The present invention relates to a novel composition for a non-cariogenic pharmaceutical or confectionery product obtained via a hard sweet-coating process and having improved crispiness relative to the prior art products.
  83. 83. Searching Outside of US. Start with PCT applications Copyright FLYNN IP LAW 2016 83 https://patentscope.wipo.int/search/en/search .jsf https://patentscope.wipo.int/se arch/en/search.jsf
  84. 84. Simple Search of Front Page of Application Copyright FLYNN IP LAW 2016 84
  85. 85. Hit then Field Combination Copyright FLYNN IP LAW 2016 85
  86. 86. http://worldwide.espacenet.com/ An alternative search tool Copyright FLYNN IP LAW 2016 86
  87. 87. Copyright FLYNN IP LAW 2016 87
  88. 88. Copyright FLYNN IP LAW 2016 88
  89. 89. Art Classifications Copyright FLYNN IP LAW 2016 89 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.
  90. 90. Patents are Grouped too Copyright FLYNN IP LAW 2016 90 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.
  91. 91. Many Different Patent Classification Systems Copyright FLYNN IP LAW 2016 91 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.
  92. 92. Copyright FLYNN IP LAW 2016 92 Same Class Code
  93. 93. It takes time to learn the codes • 292.59 from our hood latches is actually Copyright FLYNN IP LAW 2016 93
  94. 94. Sometimes you can discern the codes to use based on your best patent finds. Copyright FLYNN IP LAW 2016 94
  95. 95. Copyright FLYNN IP LAW 2016 95 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/$.
  96. 96. This found 8,231,149 Copyright FLYNN IP LAW 2016 96
  97. 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. Copyright FLYNN IP LAW 2016 97
  98. 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 Copyright FLYNN IP LAW 2016 98
  99. 99. USPTO Teaches a Patent Search Process with Focus On Search Classes Copyright FLYNN IP LAW 2016 99
  100. 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. Copyright FLYNN IP LAW 2016 100
  101. 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. Copyright FLYNN IP LAW 2016 101
  102. 102. Contact Info • Greg Tourino Associate Director Centennial Campus Research Services kgtourin@ncsu.edu (919) 513-3862 Copyright FLYNN IP LAW 2016 102
  103. 103. Time for Questions Copyright FLYNN IP LAW 2016 103 KEF@FLYNNipLAW.com
  104. 104. 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. Copyright FLYNN IP LAW 2016 104

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