Stan Lewis National Patent Services StanNational Patent Services

Stan Lewis National Patent Services

Stan@National. Patent. Services. com Voice : 703 -998 -5708 FAX : 703 -998 -5709 Cell : 202 -210 -7425 Presentation and Resource Notes : nationalpatentservices. com/NAPP I will not discuss all of these slides

Do-it-yourself Searching : l l l Considerations for – Tools and Resources – Strategies – Types of searches KWIC, NPL Proximity Operators (NEAR#, W/#) Boolean Sets (AND, OR, NOT) See Resource Notes

Patent Research Confidential disclosure and results l Disclosures are sent via : l – Digital means - email, Sharepoint l (has your server been hacked? ) – Analog means - voice, fax, mail, etc. l l (most secure) Like having a Final Exam everyday

Abraham Lincoln Method : “Give me six hours to chop down a tree and I will spend the first four sharpening the axe. ” l Invented the ; ) and US 6469 l You are now the searcher. l You will need a robust computer with dual monitors.

Abraham Lincoln Method : You may need two networked computers and three or four monitors. l Adobe 7 or higher (for OCR if needed) l – http: //www. pat 2 pdf. org/ Definitely a swivel chair l Derwent, Lexis, Google, Free Patents Online, Cobalt, others l

Start sharpening by : Using terms from the disclosure search : l Google Scholar – can use limited Boolean l Books from estate sales, Goodwill, etc. l Use favorite browser (Water. Fox, etc. )

Preparation (still sharpening) : Read and study the disclosure l Ponder the mysteries l Research some terms l Write the objective l Walk the dog (if applicable) l

From these resources Get terms of art l Learn more about the technology l May find patents that the client will find l May even find the invention l BAZINGA! l

General Search Considerations Shoshin (beginners mind) l Ponder the mysteries l Finalize the objective l Common misspellings? (adaptor, etc. ) l Need drawings or clarification? l Do not make assumptions! l

Ab Initio Considerations See resources notes l l l Start search with the narrowest interpretation of the invention Use the inventors terminology Generate small, focused sets to find Class and maybe Sub. Classes Search Classification Indices for topic Identify the relevant Classes/Subclasses

Ab Initio Considerations Identify possible internet references l Get more terms of art l Bazinga! l ad infinitum. . . l References discussed in a specification are not always cited on the front (hyperlinks!) l

Ab Initio Considerations Internet research may yield an inventor l Patent research may yield a research paper l Unimportant patents/apps may contain references worthy of forward/backward searching l Always do forward/backward search on the best references l

Ab Initio Considerations Narrowest interpretation should find something l Use stemming (suffix) operators plus ONE l Expand sets with wider proximity operators and new terms l Narrow sets with Class/Subs l – US Classes – IPC Classes – CPC Classes

Free Patent Search Tools See resources notes • Google Patents • Free Patents Online • Proximity Operators • Boolean • Espacenet • WIPO Patent Scope • Of course EAST if at the PTO! • Generally should use resources available to the examiner like : EAST, Derwent, Lexis-Nexis, DIALOG, etc.

BOOLEAN & PROXIMITY OPERATORS A = Keyword, B=another keyword, C= Class/Sub. Class

Subscription Tools Look for limitations on consecutive proximity operators • • • Lexis-Nexus Derwent (Thomson-Reuters now) Pat. Base Pro. Quest Orbitz Cobalt, Others … See resource notes

Subscription Tools –thoughts Lexis-Nexus • • • Great database Machine Translations (MT) *Full text* English MT searchable OCRs all PDFs (MT from Google) Can remove family duplicates (difficult) Search engine and Boolean (difficult) Time consuming and complex to use

Subscription Tools –thoughts • Derwent (Thomson-Reuters) • Great search engine & Boolean (EAST) • Database is very good but pricey • Derwent Tittles and Abstracts • Pat. Base • Great search engine & Boolean • Database is OK • Organizes by family

EAST and Derwent yield no hits for this : ALL=((((compressed NEAR 2 natural NEAR 2 gas) OR CNG) AND (constant NEAR 5 pressure)) and (piston NEAR 5 spring) and (engine NEAR 5 (CNG or (natural NEAR 2 gas)))) AND TAB=((engine NEAR 15 (CNG or (natural NEAR 2 gas)))); Lexis 11 hits (required two combining two sets) : (((((compressed W/2 natural W/2 gas) OR CNG) AND (constant W/5 pressure)) and (piston W/5 spring) and (engine W/5 (CNG or (natural W/2 gas))))) AND (TITLE-ABST((((engine W/15 (CNG or (natural W/2 gas))))))) One was similar to the invention sought. Now have Class/Sub-Classes for wider search. Note consecutive proximity operators

Combine wider strategy with Class/Sub : l Narrowing - always include the parent : 434/300. ccls. then 434/276. ccls. (CCL/434/300, etc. ) l IPC : G 09 B 23/06 and always include the parent G 09 B 23/00 l May also combine classes : ( 705/$. ccls. AND 434/$. ccls. ) Note that Apps are not always classified correctly! May be in the parent Sub or anywhere else!

Why does it take so long? 5 to 20 business day typical turn around l 4 -8 hours per novelty search l 10 -16 hours per Clearance l 12 -20 hours per validity (# claims? ) l 20 -40 hours per AE Novelty (# claims? ) l Pondering takes time l

Priced according to difficulty Time required to some degree (fixed fee!) l Technical level l RUSH Services l Resources consumed (DIALOG, etc. ) l Lexis – OCRs in PDFs – makes easier to locate citations in reference l

Types of Searches : Novelty l Accelerated Exam (AE) Novelty l Clearance, FTO l Validity l

Considerations for all types : Is there a specific priority date? l Are there references provided? l Is the disclosure clear? l May you talk to an Examiner if needed? l

Novelty searches : Prior art l Patentability l Collection l State-of-the-art (SOA) l Design l

Novelty Objective : Objective is to locate patents which will : – prevent inventor from getting a patent – seriously limit or drastically alter claims – generate billable hours due to lengthy discussions with an examiner – Ruin the inventors life – What and How?

Novelty searches : Would a combination of the types be better, i. e. SOA or Collection with Novelty? l Specific companies and inventors may emerge and should be noted in the report. l Any application (not provided) should be located by the searcher. l Be aware of trademarks and product names! l

Accelerated Exam Novelty (AE) “The USPTO has established procedures under which the examination of a patent application may be accelerated. ” http: //www. uspto. gov/patents/process/file/accelerated/index. jsp

Accelerated Exam Novelty l Do a novelty search first! – May change claims – Cheaper initially Specific search requirements by PTO l Specify when you file l Claims table is helpful to Examiners and may expedite App l

l Each Claim is searched individually with some strategy l Search strategy is submitted for examiner review

Accelerated Exam Novelty Must provide primary classification l Must use Search Templates l Must follow specific search guidelines l Must interview an examiner (takes time) l Must include DIALOG ($$) or such l

Accelerated Exam Novelty l Each claim is to be searched – Independent claims – Perhaps dependent claims l PTO may reject the App since you did not search some unrelated Sub Class – 30 days to fix!

Clearance : Freedom to operate l Infringement? l Design l Be aware of trademarks and product names! l l What and How for Novelty?

Clearance : Locate patent which will : l Prevent one from manufacturing or selling a product l Initiate costly litigation l Generate billable hours Objective is to locate patents with claims directed to ….

Clearance : l l l International? State-of-the-Art/Clearance combination? Target is claims of unexpired patents. Is there a specific company or inventor? Priority date? Unless instructed otherwise use the earliest date.

Clearance : l Derwent English translations (TAC always) – Abstract is summary of claims – Title is summary of abstract l l l Do not limit the date until the end Novelty (What) and Clearance (How) combination Results may indicate further research. Although not relevant to the Clearance the following references may be of interest…

Clearance : l Generate a table of results which includes Legal Status (Derwent, Lexis) l Results may lead to : – A patent for the inventor – An invalidity search for a patent potentially being infringed l More Fun!

Validity or Invalidity : l Objective is to locate references prior to a specific date which will : – Invalidate the claims of a patent… – Generate costly litigation – Cause client to call me at 8 PM begging for a specific IEEE reference that was lost (client due in court in the morning)

Validity or Invalidity : MUST have the file wrapper (PAIR) l Rejection references are the initial resource. l Why was it allowed or rejected? l Examiners search strategy? l Examiners won’t help! l Many validity studies are from AE Novelty not searched properly.

Validity or Invalidity : l l l Think out-of-the-box If the original sub-classes have expired one should search old class/sub-class as a literal Do not limit the date until the very end of the search (your QC) Objective is to locate references prior to a specific date which were not considered by the examiner and may invalidate the claim(s) of …. .

Original class example : Original Class : 60/23 l Current Class : 60/516 l Search – Full Text : l – “ 60/23” as a literal on EAST, FPO, Derwent, – 60/516. ccls. (CCL/60/516, etc. ) l look through one and use Boolean NOT to reduce duplicates

Review : HTML references should be provided as PDF or XPS l FPO, WIPO, Espace. Net, etc. for patents? l Google Scholar, IEEE, IP. COM, Science Direct, DTIC, etc. for NPL? l Translations? Google l

Review : Check class/subclass of best references. Were they all searched? l IPC Class in the FOS ? l US Class in the FOS ? l CPC (? ) l Strategy should be available to client l Should be a stated reason for each reference cited!

Mistakes ! Illegitimi non carborundum Have a bad day? l This is not a perfect world! l Research is not a perfect discipline! l Blow a search? l Everybody does at some time! "I fall upon the thorns of life! I bleed!", Percy Shelley (1819)

Annoyances : Withholding references for “QC” l Limiting the # of references to cite arbitrarily l Claims may change according to results. l Google! (I know what I mean!) l Task Creep! l

Considerations for purchasing software (IMHO) l Get a free trial ! (but not with Pro. Quest) l Some commercial packages organize by family like Pat. Base l Create tables with Legal Status l Provide sets which can be combined with NOT easily (L#s or S#s)

Considerations : l Allow nested consecutive proximity operators – ( ( silicon) w 6 (glass or ITO or titanium) ) ) W 6 (liquid w 2 crystal) ) AND (conduct w 6 transparent) – Not allowed in some commercial databases l Allow for stemming : conduct, conductive, conductor; silicon, silicone, etc. – Conduct*5, etc. l Allow bulk downloading of patents and apps

Considerations : Allow extended date sorting : priority date (US and Foreign), filing date, etc. l Should allow literal searching l – Return application # for “ 12/407, 252” – Can use PAIR l Should allow original classification searching

Additional Resources Google Scholar – indexes many DBs l IEEE Xplore, Optics. Infobase , ACM l Science Direct l Highbeam Research l NTIS, DTIC, Storming Media (free) l More in Resource Material l IP. COM – not scholar indexed (? ) l

Helpful notions : l Search design art via an image based search engine. – Image Based Search Engine Created (April 1, 2007) – http: //www. sciencedaily. com/videos/2007/0401 image_based_search_engine_created. htm l l Google Pro – Please – I know what I mean! Integrate KWIC location with images - this could reduce search time by 30 to 50%! Bi-color images! Please, it’s the 21 st Century! Submit search strategy when filing for examiner to review? Speed examination process?

Example Boolean : l Narrow will not return this reincarnation reference : – ((relativity ADJ theory) SAME (Newton ADJ Law) SAME (reincarnat$4 OR re-incarnat$4 OR immortal$4 OR Rebirth$3 OR re-birth$3 OR reborn OR re-born)) l Wide will return this reincarnation reference and others : – ((relativity WITH theory) AND (Newton WITH Law) AND (reincarnat$4 OR re-incarnat$4 OR immortal$4 OR Rebirth$3 OR re-birth$3 OR reborn OR re-born))

Combine wide Boolean operators with Class/Sub : Broad Classes : 705/$. ccls. then 434/$. ccls. then 706/$. ccls. l Narrow Class : 705/1. 1. ccls. then 705/2. ccls. (CCL/705/1. 1) l Narrow Class and always include the parent : 434/300. ccls. then 434/276. ccls. (CCL/434/300) l

Search Tools Free Patents Online (FPO) l US PTO - Employee Locater l WIPO l Espace. Net l Prior. Smart l

Classification • • • USPTO Classification Definitions USPTO Classification Search Derwent Codes (2011) IPC Class ECLA Class Locarno

Patent Research Tools l EAST (approved slides) – USPTO PSF – Alexandria, VA – Designed for Examiners Complex search engine (200 Terabytes) l Resource material provided l

East Training course for public l Dual monitors at some stations l Three pane system l – Search terms – List of L#s – List of references

EAST Open a reference l Three more panes l – List of patents with tags – KWIC – Image Dictionary, Thesaurus l Tags for ranking l Redundant references l

Internet Example l Free Patents Online – Free! – Fast – No L#s though – Ranks results – Highlight KWIC in PDF sometimes

Acknowledgements Philip Weinbrecht, Ph. D. (NPS) l Theodore Kerekes (NPS) l John Spall (Derwent) l Deborah Hansell, Ph. D. (Oxon) (ARC) l Bill Morgan (NPS) l Anonymous examiners l