Patent searching

Patent Searching for
Entrepreneurs.
Presented March 3, 2016
At RTP Frontier to
Triangle TechBreakfast Folks
Copyright FLYNN IP LAW 2016 1

Kevin E. Flynn is a hybrid ‐‐ part engineer, part lawyer, part advocate, and part coach. He uses
all these skills to be a patent attorney. Initially trained in both Biomedical Engineering and
Mechanical Engineering, he later obtained a Master's Degree in Industrial & Systems
Engineering. After working as an engineer and earning a Professional Engineering license from
the State of North Carolina, he went back to school and earned his law degree with honors
from Duke Law School. After a few years in patent litigation, including time spent with Fish &
Neave in New York City, he moved to helping companies protect their ideas and avoid legal
problems.
With a broad engineering background, Kevin works with companies with a range of
technologies but his practice has an emphasis on two areas: A) medical device companies and
B) clean energy/green technology. He helps clients decide where to spend their money to get
the most value while seeking patents in the United States and abroad. Then he works
collaboratively with the clients to create patent applications that are part required technical
disclosure and part sales pitch. In addition to helping companies obtain protection, he works
with companies to help them avoid trouble with patents owned by others.
After working at a firm that specialized in assisting start‐up companies, Kevin is very
comfortable working directly with CTOs and CEOs in companies that do not have in‐house
lawyers.
Kevin is a frequent speaker and commentator on intellectual property issues, especially those
issues of particular relevance to entrepreneurial companies. He has been named repeatedly to
the legal Elite for the category of Intellectual Property/Patent attorneys.

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.

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.

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.

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.

• Mary cannot make
either the simple “Betty
Bicycle” or a Mountain
Bike as the simple Betty
Bicycle patent covers
both.
• Take home message…

• 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
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.

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

• Can search

USPTO Quick Search
You can specify two fields and a connector AND / OR and ANDNOT

Dropdown list lets you pick fields

The list are live links
Snow plow scoop cart sounds interesting…

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

PTO shows you text to start with

PTO Shows TIF Images when you
hit

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

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

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.

To search for design patents I did for
NC inventors…

PTO Fields & Syntax

Click on a field to get the syntax

A good way to limit search is to
look for keywords in fields.
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 2016 26

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.

Results look good

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.

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

On Google or USPTO
use quotes for phrases
Searching for      hood latch
31,878 hits
Searching for     “hood latch”
2,296 ‐‐ 90+% reduction

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.

Focus on Just Issued Patents
Set filing status to
“Grant” for issued
Now just 580

Sort Order

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

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.

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.

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

When Searching – Just get the big
fish with a coarsenet

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.

Backward Chaining

Backwards Chaining (Google)

Backward Chaining

US3600018 Forward Chaining

Picked Cited by –
US20060099838A1

Note this is a published application
not a patent.
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
Search and pull up the HTML for the patent

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

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
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
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.

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

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.

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

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.

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.

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.

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

Let’s Search for the App listed in
Google Forward Chaining

This one died.

We can see the sequence

We can pull the documents

We can see what the PTO argued

We can see if they have a
related application pending
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.

We can Check to see what else they
own.
http://assignment.uspto.gov/
Pick advanced search

Search for Assignee

Results ‐‐ 10 assets

Drill down to see what they have
A design patent on a excavator rigging socket

For Issued Patents or
Published Applications You
can Order a copy of the
Assignment
37 CFR 1.12 ‐ Assignment records
open to public inspection.

MAINTENANCE FEES
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

https://ramps.uspto.gov/eram/patentMaintFees.do
Select

So the 4 year fee
should have been paid.

Check 4 Year Payment Window
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.

http://www.freshpatents.com/

2016‐03‐02 new “spine” applications

Buggy Result
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.

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

Simple Search of Front Page of
Application

Hit then Field Combination

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

Art Classifications
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
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
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.

Same
Class
Code

It takes time to learn the codes
• 292.59 from our hood latches is actually

Sometimes you can discern the
codes to use based on your best
patent finds.
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/$.

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

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

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

USPTO Teaches a Patent Search
Process with Focus On Search
Classes

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.

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.

Contact Info
• Greg Tourino
Associate Director
Centennial Campus Research
Services
kgtourin@ncsu.edu
(919) 513‐3862

Time for Questions
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.

Patent searching

More Related Content

Viewers also liked

Similar to Patent searching

Recently uploaded

Patent searching