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The Peculiar Searching Habits of the North American Patent Searcher


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This presentation was given in March 2011 at the International Symposium on IPR Information Dissemination, Taipei, Taiwan. I was asked to talk about some of the systems used by patent searchers in the United States.

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The Peculiar Searching Habits of the North American Patent Searcher

  1. 1. -Attorney Confidential- 3LP Advisors The Peculiar Searching Habits of the North American Patent Searcher Anthony Trippe – Director, IP Analytics March, 2011 - Intl. Symposium on IPR Information Dissemination, Taipei, Taiwan Copyright 3LP Advisors - 2008Copyright 3LP Advisors - 2011 1
  2. 2. -Attorney Confidential- Sources covered  USPTO – Granted patents database – Published applications database – Public PAIR – Maintenance database – Assignment database – US Classifications  Free services – Google patents – Patent Lens – Patent Calls – PriorSmart  For-fee services – Thomson Innovation – STN International – QuestelCopyright 3LP Advisors - 2011 2
  3. 3. -Attorney Confidential- USPTO – Granted Patents Database  - Advanced Search  Inventors are encouraged to search the USPTO’s patent database to see if a patent has already been filed or granted that is similar to your patent. Patents may be searched in the USPTO Patent Full-Text and Image Database (PatFT). The USPTO houses full text for patents issued from 1976 to the present and TIFF images for all patents from 1790 to the present.  Searching can be done on: – Quick Search – Advanced Search – Patent Number Search  Images also available with downloadable plug-in  Advanced search relies on the use of fields and can incorporate Boolean queries – ttl/(tennis and (racquet or racket))Copyright 3LP Advisors - 2011 3
  4. 4. -Attorney Confidential- USPTO – Granted Patents Database – ImageCopyright 3LP Advisors - 2011 4
  5. 5. -Attorney Confidential- USPTO – Published Applications Database  - Quick Search  Search for Full-Text and Image versions of patent applications. Customize searches on all fields of a patent application in the AppFT for Full-Text searches.  Searching can be done on: – Quick Search – Advanced Search – Patent Number Search  Images also available with downloadable plug-in  Advanced search relies on the use of fields and can incorporate Boolean queries – ttl/needle or ttl/syringe andnot (sew or thread$)Copyright 3LP Advisors - 2011 5
  6. 6. -Attorney Confidential- USPTO – Published Applications Database – ImageCopyright 3LP Advisors - 2011 6
  7. 7. -Attorney Confidential- USPTO – Public PAIR  - Public PAIR  The Patent Application Information Retrieval (PAIR) system provides IP customers a safe, simple, and secure way to retrieve and download information regarding patent application status.  Requires Re-Capcha for entrance  Search by application number, patent number or publication number  Provides electronic file wrappers for past several years  Can be used to follow continuations  Provides a portal into the maintenance database  One of the only ways to check migration from published application to granted patent  Private PAIR also exists but you need to have a certificate and access to applications filed less than 18 months agoCopyright 3LP Advisors - 2011 7
  8. 8. -Attorney Confidential- USPTO – Public PAIR – ImageCopyright 3LP Advisors - 2011 8
  9. 9. -Attorney Confidential- USPTO – Maintenance Database  - Maintenance database  All utility patents which issue from applications filed on or after December 12, 1980 are subject to maintenance fees, which must be paid to maintain the patent in force. These fees are due 3 1/2, 7 1/2 and 11 1/2 years from the date of the original patent grant. Fee payments must include both patent and application numbers. If the fee is being paid for reissue, the application number required is the reissue application number.  Requires patent number and application number  Use the Get Bibliographic Data button to access report on maintenance of particular patent  When does fee window open and close  Which fee period is due  Is the company a large entity or small entityCopyright 3LP Advisors - 2011 9
  10. 10. -Attorney Confidential- USPTO – Maintenance Database – ImageCopyright 3LP Advisors - 2011 10
  11. 11. -Attorney Confidential- USPTO – Assignment Database   During examination of a pending patent application or after registration, the owner of the mark may change: 1) the original owner may transfer ownership to another entity or party, through an “assignment;” or 2) the original owner may retain ownership but change its name. The original owner should record the assignment or name change with the USPTO’s Assignment Services Division by filing a Recordation Cover Sheet along with a copy of the actual assignment or proof of name change.  Electronic Patent Assignment System (EPAS) – Use EPAS to create and submit a Patent Assignment Recordation Coversheet by completing on-line web forms and attaching the supporting legal documentation as black and white TIFF or PDF for submission via the internet.  Assignments on the Web for Patents (AOTW-P) – Use AOTW-P to search the database of all recorded Patent Assignment information from 1955 to the present (Trademark Assignments recorded prior to 1955 are maintained at the National Archives and Records Administration).Copyright 3LP Advisors - 2011 11
  12. 12. -Attorney Confidential- USPTO – Assignment Database – ImageCopyright 3LP Advisors - 2011 12
  13. 13. -Attorney Confidential- USPTO – US Classifications  - US Classifications  The Office of Patent Classification maintains the U.S. Patent Classification system.  Recently announced that USPTO will cooperate with European Patent Office to create a unified classification system which will be based on EPO ECLA and will be jointly developed by both offices  Currently IPC codes are assigned based on a concordance  Existing US classification system will be merged with ECLA in new classification system  Search by class and subclass  Identify US to IPC8 concordance  Identify US to Locarno concordanceCopyright 3LP Advisors - 2011 13
  14. 14. -Attorney Confidential- USPTO – US Classifications – ImagesCopyright 3LP Advisors - 2011 14
  15. 15. -Attorney Confidential- Free Services – Google Patents   Google and the USPTO have entered into an agreement to make bulk patent and trademark data available to the public at no charge  Quick search allows searching by patent or publication number  Publication number searching requires year/publication number format (2002/123456 for instance) where most other systems would only require yearpublication number (2002123456)  US only  Spotty coverage of pre-grant publications  Provides claims, images and citations readily  Uses Google Book technology to allow for searching and highlighting of text within the body of the patents  Advanced search also availableCopyright 3LP Advisors - 2011 15
  16. 16. -Attorney Confidential- Free Services – Google Patents – ImagesCopyright 3LP Advisors - 2011 16
  17. 17. -Attorney Confidential- Free Services – Patent Lens   Patent search interface in Chinese ( ), English, Russian (Русский), and French  Full text of PCT applications now searchable in Chinese, English, French, German, Japanese, Korean, Russian and Spanish  Full text of EPO patents now searchable in English, French and German  Search for lapsed, abandoned or expired US Patents  Visualize Patent Families with new graphical trees as PDFs – Unique feature – A pretty good attempt at a difficult concept  Includes Patent Family and Status including link to Public PAIR  Free Full-text Worldwide Patent Searching - 10,702,297 patent documents - updated Dec 21, 2010Copyright 3LP Advisors - 2011 17
  18. 18. -Attorney Confidential- Free Services – Patent Lens – ImageCopyright 3LP Advisors - 2011 18
  19. 19. -Attorney Confidential- Free Services – Patent Lens – Image Family TreeCopyright 3LP Advisors - 2011 19
  20. 20. -Attorney Confidential- Free Services – Patent Calls  - Patent Calls  Patent Calls™ combines expert IP research and state of the art software search and analysis tools - Connecting Patents to ProductsSM.  Provides maintenance information with “stop-light” indicators  Provides information on post-issuance documents  Allows comparison of applied for claims vs. granted claims – One of the few sites that do this – Very powerful for quickly seeing the effects of examination on the original claims  Provides PDF images, citations, references and prior art  US patents and applications onlyCopyright 3LP Advisors - 2011 20
  21. 21. -Attorney Confidential- Free Services – Patent Calls – ImageCopyright 3LP Advisors - 2011 21
  22. 22. -Attorney Confidential- Free Services – PriorSmart   Best known for US litigation daily email – Let me know if you would like an invitation  Provides free searching  Provides list of new patent litigations in the US  Provides list of patent related Twitter activity  Provides list of patent related blog posts  Other services available by requestCopyright 3LP Advisors - 2011 22
  23. 23. -Attorney Confidential- Free Services – PriorSmart – ImageCopyright 3LP Advisors - 2011 23
  24. 24. -Attorney Confidential- For-Fee Services – Thomson Innovation   Thomson Innovation is a single, integrated solution that combines intellectual property, scientific literature, business data and news with analytic, collaboration and alerting tools in a robust platform  Includes Worldwide patent data including full-text content of many countries  Includes Derwent World Patents Index  Includes scientific literature and business documents as well as patents  Forms based searching  Subscription service – Multiple users can subscribe at various levels with various features – Analyst level provides all analytical features and most liberal ability to download information for analysis in Excel • Includes ThemeScape – Thematic mapping application • Includes citation trees • Includes text-clustering feature • Includes charting and graph serviceCopyright 3LP Advisors - 2011 24
  25. 25. -Attorney Confidential- For-Fee Services – Thomson Innovation – ImageCopyright 3LP Advisors - 2011 25
  26. 26. -Attorney Confidential- For-Fee Services – STN International  – STN International in North America  CAS STN databases offer the largest collection and depth of chemical and related information compared to other commercial web based databases. In addition, CAS is the only company that has a unique, proprietary, chemical structure searching capability using its STN Express software. No other source can successfully meet the USPTOs requirements.  Best system for chemical structure based searching  Command line, Boolean based searching system  Includes nearly 200 databases including CAS, DWPI, patent, and non- patent databases  Provides access to STN AnaVist for advanced analysis and visualization of patent and non-patent records from CAplus, DWPI and selected patent databases  Subscription service – pay by connect hour, search terms and display feesCopyright 3LP Advisors - 2011 26
  27. 27. -Attorney Confidential- For-Fee Services – STN International – ImageCopyright 3LP Advisors - 2011 27
  28. 28. -Attorney Confidential- For-Fee Services - Questel  htm  Provides command line driven interface as well as new form based interface called  Provides MMS system for searching Markush chemical structures from French Patent Office (INPI) and Derwent (Thomson)  Also provides chemical structure searching  Analysis products allow: – Analyze documents by date, country, priority country, publication, and priority country timeline – Detect assignees colaboration and top assignees – Measure technologies, assignees, etc. by IPCs – Identify cited and citing patents.Copyright 3LP Advisors - 2011 28
  29. 29. -Attorney Confidential- For-Fee Services – Questel – ImageCopyright 3LP Advisors - 2011 29
  30. 30. -Attorney Confidential- For-Fee Services – ProQuest Dialog   The new ProQuest Dialog™ offers an intuitive interface which simplifies access to our breadth of content for researchers of all kinds. It is an exciting approach to precision search based on relevancy, transparency, control and completeness.  Provides command line driven interface as well as new form based interface  Provides more than 200 databases including many popular patent databases  Includes most comprehensive collection of non-patent databasesCopyright 3LP Advisors - 2011 30
  31. 31. Patent Information Users Group, Inc.The International Society forPatent Information2010 Update 31
  32. 32. -Attorney Confidential- 3LP Advisors Who are PIUG members?  PIUG has over 700 active members from 27 countries with the largest concentration of members from the USA, Europe and Japan – PIUG members are patent attorneys, patent agents, licensing professionals, patent information researchers, patent information vendors, and patent information and documentation experts – PIUG members are employed in performing patentability, freedom-to-practice, and validity patent searches for Fortune 500 / multinational companies, leading universities and major IP law firms – PIUG members produce many of the tools used for32Copyright 3LP Advisorspatent searching and analysis - 2009
  33. 33. -Attorney Confidential- 3LP Advisors What benefits does PIUG provide?  PIUG has an active Discussion Forum that is featured on the PIUG wiki, a global collaborative tool with over 1350 subscribers worldwide – Members access to conference presentations, etc.  PIUG schedules three annual meetings that provide education and networking opportunities  PIUG is developing training materials and working in collaboration with other professional patent organizations towards international certification  Chinese chapter with over 100 members – 3LP Advisors - 2009
  34. 34. -Attorney Confidential- 3LP Advisors Upcoming PIUG events  PIUG Annual Conference – Cincinnati, OH – 21-26 May 201134Copyright 3LP Advisors - 2009