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Steps to Successful Preliminary Patent Searching

Steps to Successful Preliminary Patent Searching. Karen M. Kitchens Karen.kitchens@wyo.gov 307-777-7281 Patent and Trademark Resource Center Wyoming State Library. Thorough Searching is Critical. Search Benefits for Inventors. Better prepared to discuss ideas confidentially.

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Steps to Successful Preliminary Patent Searching

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  1. Steps to Successful Preliminary Patent Searching Karen M. Kitchens Karen.kitchens@wyo.gov 307-777-7281 Patent and Trademark Resource Center Wyoming State Library

  2. Thorough Searching isCritical

  3. Search Benefits for Inventors • Better prepared to discuss ideas confidentially. • Avoid infringement. • Track research and development. • Access to wealth of information.

  4. Types of Patents Utility - 20 years from filing date Design - 14 years from date granted Plant - 20 years from filing date

  5. Criteria of Patentability

  6. What Is Prior Art? Art = Technology 35 USC § 102 - Conditions for Patentability; Novelty and Loss of Right to Patent All information that has been disclosed to the public in any form about an invention before a given date.

  7. Examples of Prior Art

  8. AIA & Prior Art America Invents Act (AIA)

  9. Non-Obvious Sufficiently different from what has been used or described prior. Non-obvious to person having ordinary skill in area of technology. Patent N0.: US 8,569,980 B2 Oct. 29, 2013

  10. Where to begin?

  11. Pitfalls of Keyword Searching Titles and abstracts often vague • Slinky = “Toy and Process of Use” • iPod = “Media Device” Terminology changes British spellings and terminology (e.g. tyre, aluminium, petrol, defence) Keyword searchable from 1976 (USPTO website) All patents prior art

  12. 7 Step Strategy

  13. 7 Step Strategy Click Here

  14. 7 Step Strategy Click Here

  15. Step 1: Brainstorm Step 1

  16. Step 1: Brainstorm • Purpose? Utilitarian or ornamental? • Process or product? • What is the invention made of? • How is it used? • Keywords and technical terms that describe? • VehicleAutomobileInternal Combustion EngineFuel Injection

  17. Step 2: Determine Initial Classification Click Here

  18. Step 2: Determine Initial Classification Go to "M" for Mousetrap

  19. Step 3: Verify Relevancy Manual of Classification Link to Class Schedule Mouse trap: Class 43 Fishing, Trapping, and Vermin Destroying/ Subclass 58+Traps

  20. Step 3: Verify Relevancy Class Number – Links to Class and Subclass definitions file. Class Title Subclass Numbers link to subclass definitions file. Dots – indicate a level of indentation between subclasses.

  21. Step 4: Read Classification Definitions Subclass 58 Traps

  22. Step 5: Review Published Applicationsand Patents in Selected Subclasses icon links to search of Pre Grant Publication Applications Manual of Classification icon links to search of Granted Patent Applications

  23. Step 5: Review Published Applicationsand Patents in Selected Subclasses Click here to view Granted Patent Abstract

  24. Step 5: Review Published Applicationsand Patents in Selected Subclasses Click here to view Patent Image

  25. Step 6: Find Relevant CPCs 43 58

  26. Step 6: Find Relevant CPCs

  27. Step 6: Find Relevant CPCs

  28. Step 7: Conduct CPC Class Scheme Search

  29. Patent and Trademark Resource Center (PTRC) • Designated by USPTO. • Disseminate patent and trademark information. • Support the IP needs of the public. • Over 79 PTRCs throughout the U.S.

  30. Unique Offerings at PTRC • Reference Materials and Tools • USPTO manuals, guides and handbooks. • USPTO directories and general publications. • Non-USPTO publications. • One-on-One Training • PubWEST • PubEAST

  31. Comparison of Features: PubWESTvs. PubEAST

  32. Updated for Finding Relevant CPC Classifications Both PubWEST and PubEAST provide relevancy ranking to search results for: • Cooperative Patent Classification (CPC) • U.S. Patent Classification • International Patent Classification (IPC) Bottom line: You waste less time looking at patents loosely related to your search.

  33. How Do PubWEST & PubEAST Differ from PatFT and AppFT on USPTO Website? …Faster

  34. …Faster, More Precise Searching with Proximity Operators OR AND NOT

  35. …Faster Searching with Optional Key Word in Context View Text display choice can be “KWIC” Key Word in Context – • Displays only paragraph(s) containing search term(s). • Not possible on USPTO PatFTand AppFT.

  36. …Faster Searching with Set Numbers • Searches are saved in set numbers, easily combined. • Not possible on USPTO web’s PatFT and AppFT.

  37. ...Faster Searching with Multiple Database Search

  38. …Faster Viewing Time saver: move from front page image to front page image in a list of patents with one click

  39. More…Patents: Foreign Patents Access • EPO Abstracts • JPO Abstracts • Foreign Document Images Retrieval (PubWEST)

  40. More…Display and Download Options Side by Side Display : Clicking on the publication numbers on the left, “flip” through the front pages..

  41. Downloaded Results in a Spreadsheet The selected records will download to a spreadsheet in a .csv file, if you have spreadsheet software on your PC.

  42. Summary • PubWESTand PubEAST are portals to patent databases from the U.S. Patent and Trademark Office. • Powerful, time-saving features. • Features only available at no charge at the USPTO Public Search Facility and PTRCs. • Try out PubWEST or PubEASTfor your searching needs.

  43. Questions? Karen M. Kitchens karen.kitchens@wyo.gov 307-777-7281 Patent and Trademark Resource Center Wyoming State Library

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