Searching for Prior Art:Moving From the Search Room

to the World Wide Web

Larry Tarazano Primary Examiner

Technology Center 1700U.S. Patent and Trademark Office 

Conference on Intellectual Property in the Global Marketplace

What is “Prior Art”?

• We have all heard the term “state of the art.”

• The term “useful arts” is used in Article 1, Section 8 of the Constitution.

– “The Congress shall have the power to … promote the progress of science and the useful arts…”

“Prior art” is the technology that was known before.

What is “Prior Art”?

What Constitutes Prior Art Against a U.S. Patent Application?

• Printed publications in any language, U.S patents, and foreign patents, which publish before the filing date of the patent application. This includes items that are electronically published.

• Additionally, published U.S. patent applications, U.S. patents, and certain applications filed under the Patent Cooperation Treaty are also available for their effective U.S. filing date.

Why Do a Prior Art Search?

To uncover what has been done before:

• Determine if the idea warrants the time and expense of filing for a patent.

• Also, provides background information for writing the patent application and helps shape the scope of the claims.

Where Does One Find Prior Art?

• Everywhere!

However, it is best to look in the places most likely to contain information about a particular technology.

TARGET THE SEARCH!

• Outline the invention

• Think about where most relevant information would be. A lot depends on the nature of the invention.

– Journal articles

– Books related to the discipline

– Internet search engines (e.g. Google™)

– Commercial databases

– National patent office databases

How Does One Start a Prior Art Search?

Searching for “Prior Art” in the Early 20th Century

Searching for “Prior Art” in the 21st Century

• The USPTO allows the public to freely search on our Web site, USPTO.gov

– http://www.uspto.gov/patft/index.html

• Additionally, other national offices allow you to search their databases. The Japanese even provide some information in English.

– European patent databases:

• http://www.espacenet.com/access/index.en.htm

– Japanese patent database:

• http://www.ipdl.ncipi.go.jp/homepg_e.ipdl

Patent Databases

Patents Search Page

USPTO.gov

Complex Searches

Patent Number

How to Search the U.S. Patent

Database on USTPO.gov • The Web site gives extensive information of what

fields may be searched.

• What search operators may be used

– OR, AND, ANDNOT

• And how to truncate words

– elec$

• This query would retrieve patents that contain the words electricity, electric, electronic, etc.

How to Search the U.S. Patent

Database on USTPO.gov

• Issued patents (PatFT)

– Full-text since 1976, full-page images since 1790

• Published applications (AppFT)

– Published since March 15, 2001

What is Available Online from the USPTO?

• Searching the text of patent documents using keywords

• Searching by patent classification and viewing the images

• Combinations thereof

Searching Techniques

Searching by Keywords Can Be Difficult

“A rose by any other name would smell as sweet…” (Shakespeare, Romeo and Juliet)

Unfortunately, this also illustrates the pitfalls of text searching:

•Different words can be used to describe the same thing

•Additionally, the same word can be used to describe different things

What is the U.S. Patent Classification System?

• It is a system that has developed over the years to organize U.S. patents based on their subject matter.

• It allows related “prior art” to be grouped together and helps TARGET a search!

• Other countries have their own classification systems, and there is the International Patent Classification System (IPC).

IP Cosmetics, Inc.

and the toils of finding

“prior art”

on the design of their bottle

Introducing

IP Cosmetics, Inc.

• This is one of the design concepts for the container to hold a new cream made by IP Cosmetics, Inc.

Searching for Prior Art

• In this instance, the “patentable” feature is the appearance of the container.

• The design of the bottle may be researched in a variety of ways.

USPTO Patent Database

• Searching by classification using class/subclass:

– Manual of Patent Classification

– Searching the text of patents and looking at the classification of the documents

– Consulting the USPTO (800-PTO-9199)

USPTO Patent Database

• Determining classes/subclasses:

USPTO Patent Database

• Determining classes/subclasses:

USPTO Patent Database

• Determining classes/subclasses:

USPTO Patent Database

• Determining classes/subclasses:

(light bulbs)

USPTO Patent Database

• Searching by class/subclass:

USPTO Patent Database

• Searching by class/subclass:

Search Hits

Search Hits

Search Hits

Search Hits

USPTO Patent Database

• Another tactic is a combined patent classification and text search:

• First, the scope of the prior art is limited by classification to design patents.

• Second, the search results are further limited by searching keywords.

Design Patents

All Patents

Design Patents on Actual Light Bulbs

Targeting a Search Using Classification

Further Limiting the Search by Text Searching

Design Patents

• Possible Key Words

ContainerBottle

LightbulbLight Bulb Light Bulbs Lite Bulb Holder

Support

A Combined Classification and Text Search

• A text search for light bulb including the terms holder or support

A Combined Classification and Text Search

A Combined Classification and Text Search

Results of the Prior Art Search

•People have designed containers in the shape of light bulbs and light bulb stands, however, none approximate the shape of this design.

Conference on Intellectual Property in the Global Marketplace

Donald.Tarazano@uspto.gov

THANK YOU

Searching for Prior Art:Moving From the Search Room

to the World Wide Web