Prior art searches

Prior art search: what is it and how to perform it?
“IP”h.D. - Intellectual Property fundamentals for Ph.D. Students
June 17, 2021
Massimo Barbieri
Politecnico di Milano
Technology Transfer Office

Massimo Barbieri - 2021
Index
Introduction
Patent databases
Prior art searches
Classification symbols
Examples

To avoid «reinventing the wheel» (waste of R&D resources)
To avoid infringement of other companies’ patents
To write a better patent application
To speed up the prosecution of a patent
To find out the most recent inventions
To study the development of a particular technology
Why prior art searches are important!

Before starting my research
(e.g. Master or PhD thesis)
State of the
art search
TTO
request
Patentability
search
PCT
12 months
National filing
Filing
Patentability
search
12 months
The entire patent procedure
Patentability
search
6
months
Patent
publication
Monitoring
When do we perform prior art searches?

Patent databases
Free of charge sources
ü (provided by national or regional patent offices)
Espacenet, Patentscope
ü (provided by independent producers)
GOOGLE PATENTS, Free Patents Online
Professional sources
ü Derwent Innovation, Orbit Intelligence,
Patbase

Patent databases
- Coverage [Countries (EP, US, CN) and number of docs]
- Search engine
- different results obtained
Database Results
Espacenet 64,453
Patentscope 72,315
Search for «graphene» in the abstract field
Use more than one patent database

Informative (or “quick” or state of the art): informative search for R&D
planning, technological trends analysis, competitors‘ monitoring (IPC +
KW)
Types of prior art searches (1)
Patentability search (novelty): the purpose is to determine whether an
invention is novel and potentially patentable
Validity (or opposition) search: a patentability search carried out to
determine if a granted patent is indeed valid
Legal status: the objective is to know if a patent is still alive or expired
Freedom to operate search: the purpose is to determine if a product is
marketable without infringing third parties rights

Operators:
Boolean (AND, OR, NOT)
proximity
Language used: English
Patent searching: how to do it? (1)
Scope of patent searches: to find out documents that claim similar
technical features and not a mere match of words.
A patent search may be carried out:
by keywords (intuitive but subjective)
by classification codes
by citations
Language-independent
search tools

Example: protective masks (useful for pandemics)
TI: protective mask à 2,507 results
TI or AB: protective mask à 11,382 results
IPC: A41D 13/11 à 19,886 results
Use classification
codes

A KW search is worthless to search for nanotechnology-related patents
Classification searches (nanotechnology)
No. of subgroups
IPC CPC
B82B 2 27
B82Y 9 9
B82B; 4765
B82Y; 100030
26309
72617
0
20000
40000
60000
80000
100000
120000
B82B B82Y
CPC vs. IPC (Espacenet)
CPC IPC
ipc=B82Y NOT (cpc=A OR
cpc=B OR cpc=C OR cpc=D
OR cpc=E OR cpc=F OR
cpc=G OR cpc=H)
18.762 documents don’t
have any CPC symbol

Classification searches (nanotechnology)
29274
79635
0
10000
20000
30000
40000
50000
60000
70000
80000
90000
B82B B82Y
IPC (Patentscope)
Use both classification systems

1. Analysis of the information received about the invention (identify the
essential features)
2. Identification of the most suitable databases for finding the prior art
3. Planning of a search strategy (how to select and combine KWs and classes)
4. Evaluation of the retrieved documents
Some useful tips:
• Search in the title + abstract + claims (rather than in the full text), using
precise KWs and classes [start small, expand carefully]
• Avoid long search queries, don’t combine all aspects in one query
• Aim for small result sets (50 records) and then expand the search
• If you find a very relevant document, do forward and backward citation
searches immediately (make use of the expertise of patent examiners!)
The important things to remember are:

EF1 KW1EF1 KW2EF1 CEF1
EF1 = KW1EF1 OR KW2EF1 OR CEF1
Possible queries:
EF1 AND EF2
EF1 AND EF3
EF2 AND EF3
Invention with 3 essential features (EF)
Drawbacks:
- the number of hits is too large to be able to review them all
- the sets of KWs are supposed to be complete

“4D printing is the process through which a 3D printed object
transforms itself into another structure over the influence of
external energy input as temperature, light or other environmental
stimuli”
Example
4D printing
Classification codes Definition
B33Y Additive manufacturing
B29C 64 Processes of additive manufacturing
B22F 10/10 Additive manufacturing from metallic powder – Formation of a
green body
B22F 10/20 Additive manufacturing from metallic powder – Direct sintering or
melting
2. 4th dimension concept: (4_D print+) OR (shape W memory) OR
programmable OR (self W healing) OR (self W assembl+) OR (four W
dimensional)
1. 4D printing concept: AM classification codes
3. Materials concept: (metal? OR polymer+ OR ceram+ OR hydrogel?
OR ionomer? OR vitrimer? OR alloy?)

Example
Results
No. of results Search query
413.771 ((4_D PRINT+) OR (SHAPE W MEMORY) OR PROGRAMMABLE OR (SELF W
HEALING) OR (SELF W ASSEMBL+) OR (four W
dimensional)/TI/AB/CLMS/ICLM
8.567.756 ((METAL? OR POLYMER+ OR CERAM+ OR HYDROGEL? OR IONOMER? OR
VITRIMER? OR ALLOY?))/TI/AB/CLMS/ICLM
65.006 (B33Y+ OR B29C64+ OR B22F10/10 OR B22F10/12)/IPC/CPC
542 1 AND 2 AND 3

Why is better to start precise and expand later:
1. To avoid noisy result sets
2. To assess the usefulness of each search query
3. To reduce the risk of discarding relevant documents
4. This approach may help to decide when to stop the search: that is
when the next queries give so much noise that it is not worthwhile
to continue

Classification is a system of sorting inventions and their patent documents
into technical fields covering all areas of technology. Every patent document
is given a classification symbol by the examiner.
Patent offices developed classification systems in the 19th century in order
to cope with the growing volume of patents and non-patent literature.
The most used patent classifications today are the IPC and the CPC.
The IPC is a hierarchical classification systems. The top level consists of 8
sections (A – H) which are divided into 76,000 subdivisions called classes,
subclasses, groups and subgroups.
The CPC is an enhanced version of the IPC, uses the same structure as the
IPC but with more subdivisions.

The IPC is updated every year on 1 January
After each update, all patent documents are reclassified
CPC is used by EPO and USPTO and a few other national offices
When the CPC changes , all patent documents are also reclassified (there is
only one single version of the CPC: the one currently in effect)
It is estimated that 90% of the documents requiring a CPC classification will
receive one within eight months after publication
Since CPC is available a few months after the publication date, you should not
search with CPC symbols if you are targeting recently published documents

Patent classification
Classification system No. of subgroups
IPC 76,000
CPC 250,000
FI (File Index) 190,000
F-terms 350,000

Structure of IPC codes
Graphene is a carbon allotrope (C01B32), which is a non-metallic element (C01B),
formally classified in inorganic chemistry (C01).

How to retrieve IPC codes
https://www.wipo.int/classifications/ipc/ipcpub/

A surgical instrument and a method for geometrical evaluation of
an object inside a body of a human being or animal is described.
The instrument comprises a handle, a reference device and
means for bringing said reference device into the vicinity of said
object, said instrument co-operating with an image acquisition
device for acquiring at least one image of said reference device
when it is in the vicinity of said object. Typically, the object is a
lesion of an internal tissue, for example a cartilage tissue of an
articulation of the knee.

CPC codes

CPC codes
pn=US5645599A https://worldwide.espacenet.com

Hierarchy

Rules
ü The claimed invention will only classified at the lowest
level of the classification hierarchy which describes
best the underlying technology (“last place rule”)
ü A classification symbol is not cumulative, which means
that the set of patents which is classified at a higher
level of hierarchy does not include patents which are
classified at a lower hierarchical level

Example
A patent application claiming a mixture of carbon
nanotubes and graphene
Use classification codes at a main group or subclass level

http://worldwide.espacenet.com Espacenet
The user interface is available in the 3 official EPO languages

Espacenet

To extend a search, truncation symbols (wildcards) can be used to
include, for example, the plural form of a word, or alternative spellings.
There are three different wildcard characters available in Espacenet:
* stands for a string of characters of any length
? stands for zero or one character
# stands for exactly one character
Example: to find the word
car or cars type car? in the title field
polymerization or polymerization polymeri#ation
polymeric, polymer, polymerization, to polymeriz polymer*
Truncation symbols

• the number of displayed documents is limited to 500;
• the maximum number of search terms per field is ten;
• a maximum of 20 search terms and 19 operators per query
can be used;
• The search languages are English, French and German;
•Full text search is available in “Worldwide collection of
published applications” (in English, French and German);
• IPC and CPC are the only supported classification systems;
• XP documents cannot be searched
Espacenet

Exercise
ü Find applications filed by Biontech published in the
year 2020, where the word RNA appears in the title,
using Espacenet
ü Find patent application no. US2020282046A1
Ø Who is the applicant?
Ø Is it granted?

Example 1
ü A device used for inhibiting the automatic opening of
cars’ door
ü a sensor warns drivers not to open a door if
someone or something is approaching from the rear
or on one side

Example 1

Example 2
Credit: H. Wongel [Cooperative Patent
Classification (CPC) Roma, 8 luglio 2014]

Example 2

Example 2
1. Concept of locating an object: CPC [A63B 2024/0053]
2. Concept of golf ball: CPC [A63B37/0003] and [golf
ball*]
3. Concept of RFID: CPC [A63B 2225/54] or RFID [add
the concept of golf ball]

Start small, expand carefully
Start using very specific words in title and abstract
Expand the search using synonyms and classes to increase recall
Use the full text to complete the search
Analyze the drawings, title, abstract and then claims and full text
When you find a relevant patent, search for cited and citing documents
Search on more than one database
Summarizing

Prior art searches

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