MODULE 3:

PATENT SEARCH

EE120 - PATENT LAW AND INTELLECTUAL

PROPERTY RIGHTS

Compiled
By:

Conrado F. Ostia, Jr.

Types of Patent Searches

Patent Information
Patent documents contain descriptions of scientific and technical concepts as well
as practical details of processes and apparatus. We have also learned that a patent
has a requirement to disclose technological information by describing the invention
according to the applicable patent law and indicate the claimed novelty and
inventiveness by referring to the existing state-of-the-art (current technology).
Patents are thus sources of information, often the latest information.
In many cases, patent documents furnish the history, in summarized form, of the
technological progress in the field of technology to which they relate.

World Intellectual Property Organization (WIPO)

WIPO is one of the 15 specialized agencies of the United Nations (UN). WIPO was created in
1967 "to encourage creative activity, to promote the protection of intellectual property
throughout the world.

WIPO Indicators 2012

 More than 2 million patent applications filed worldwide in 2011.
 International patent filings set a new record in 2011 with the fastest 11%
growth since 2005. (China, Japan and the US accounted for 82% of this
growth.)
 In 2011, China overtook the US to become the largest patent office in the
world. (Between 2010 and 2011, Chinese resident filings grew by 41.9%)
 Continuing shift in the geography of patent filings. (Between 2009 and 2011
patent filings worldwide grew by 293,900 with SIPO applications
accounting for 72% of total growth)
 Patent filings for digital communication technologies grew by 8% annual
growth rate between 2006 and 2010, while filings for pharmaceuticals have
continuously declined since 2007.
 Continuous growth in applications for energy related technologies. (The
total number of patent applications for four energy-related technologies –
 fuel cells, geothermal, solar and wind –increased by 8% in 2010 compared
to 2009.
 Patents granted worldwide approached 1 million in 2011 bringing the total
number of patents in force worldwide to 7.88 million.
 Substantial growth (35% increase) in utility model filings observed between
2010 and 2011.

Derwent World Patents Index (DWPI)

DWPI is a database containing patent applications and grants from 44 of the
world's patent issuing authorities.
DWPI 2012 State of Innovation
IP ownership has become more central to business strategies
 IP policy has, therefore, moved to the forefrontof innovation policy.
 Demand for patents has risen from 800,000 applications worldwide in the
early 1980s to 1.8 million in 2009. This increase has occurred in different
 waves, with Japan driving filing growth in the 1980s, joined by the United
States (US), Europe and the Republic of Korea in the
 1990s and, more recently, by China.

Patent Search
 A patent search is a learning process in and of itself.
 A patent search is continually iterative.

Types of Patent Searches

1. Pre-Application Searches (PAS)
 In the PAS search, the inventor should look for any printed
publications, public knowledge, or patents already issued in his
country or a foreign country that may relate to the particular
invention.
 The PAS would also prepare the inventor for the next steps in the
search process, State-of-the-Art and Novelty Searches, after getting
ample information on the available publications and public
knowledge.

2. State-of-the-Art Searches
 Further reasons for undertaking this kind of search could be the wish
to identify alternative technologies to solve a problem.
 State-of-the-art searches are especially useful for technology
development or technology transfer purposes.

3. Novelty Searches/Prior Art Searches

 The objective of a “Novelty Search” is to determine whether an idea is
new.
 The aim of the search is to discover relevant prior art or if a patent has
already been granted.
 The outcome of the novelty search will help you with the next
decision of whether to stop or to go forward spending time and money
developing the invention.
 If nothing of relevance was found during a comprehensive Novelty
search, the decision could easily be made to proceed with the
subsequent steps to seeking patenting your invention. The decision is
more difficult if one or several pertinent patent documents are found.

4. Patentability Searches
 A “Patentability Search” is made to locate patent documents relevant
to the determination of this other criteria of patentability: the inventive
step.
 This type of search should cover all the technical fields, which may
contain material pertinent to the invention.
  Novelty and patentability searches are mainly carried out by industrial
property offices in the course of the examination of patent
applications

5. Name Searches / Bibliographic Searches

 These are searches often used for locating information about
published patent documents involving specific companies or
individuals, as applicants, assignees, patentees or inventors.
 The point of this type of search is to find out what is covered by a
specific patent number or to find out what patents a particular inventor
has to his credit.

6. Technological Activity Searches

 These are to be understood as searches for identifying companies
and/or inventors who are active in a specific field of technology.
 These searches are also suitable for identifying countries in which a
certain technology is being patented, so as to know where to look to
obtain particular information in a given field of technology.

7. Infringement Searches
 The objective of an “Infringement Search” is to locate patents and
published patent applications, which might be infringed by a given
industrial activity or invention that attempts to improve on an existing
patent.
 In this type of search, the aim is to determine whether an existing
patent gives exclusive rights covering that industrial activity or any
part of it, in a particular country or region.
 This type of search is often performed to support a legal opinionthat
an unauthorized party is, or is not, using a patented technology
without the permission of the individual or organization who owns it.

8. Freedom-To-Operate Searches
 Freedom to operate (FTO) is the ability to proceed with research,
development and commercialization of a product, while fully
accounting for any potential risks of infringing activity, i.e., whether a
product can be made, used, sold, offered for sale, or exported, with a
 minimal risk of infringing the unlicensed Intellectual Property Rights
(IPR) or Tangible Property Rights (TPR) of others.
 An organization will typically conduct a search of this nature to
support a legal opinion that a product does not infringe a valid, in-
force patentheld within the country where the organization is planning
to conduct business.

9. Validity Search
 In order to determine whether a patent will withstand attack in
litigation, a patent validity search is conducted. You could think of a
validity search as an extensive or comprehensive patentability search.
 It is similar to a patentability search, but its purpose is to determine
whether a patent already obtained on an invention is valid or not.

10. Legal Status Searches

 This type of investigation is made to obtain information on the
validity (status) of a patent or a published patent application, on a
given date, under the applicable patent legislation in one or more
countries.
 Such information can assist in making decisions on, for example,
exporting, or in the negotiation of license agreements.
 It can also give guidance on the value attached to a particular patent
by the patentee.

11. Patent Family Search / Equivalent Search

Patent family searches are used to:
 Find the countries in which a given patent application has been filed
(if published);
 Find a “patent family member” that is written in a desired language;
 Obtain a list of prior art documents or “References Cited; and
 Estimate the importance of invention (based on the number of the
patent family members published in different countries.

12. Patent Landscape Search

 A very comprehensive state-of-the-art search.
  The patent landscape search is a deeper analysis of patent and non-
patent references after completion of the state of the art.
 Using aspects of competitive intelligence, a landscape study is
something that could anticipate any product liability issues in the
future.

The patent landscape study helps:

 Monitor markets of interest
 Identify gaps in and improve your research and development
 Determine which of your prospective patents will have significant
commercial value
 Confirm which inventions are now in the public domain
 Better understand current competitors and identify future ones

Intellectual Property (IP)

Intellectual property refers to creations of the mind, such as inventions; literary
and artistic works; designs; and symbols, names and images used in commerce.
 Patent Search Tools

Patent information is available from both free and feebased sources.

 FREE SOURCES OF PATENT INFORMATION
• Newspapers, journals
• Radio, television
• Internet, Information databases
• Company Publications
• Official publications by government authorities such as reports,
statistics, etc.

Patent documents
Patent database
Finding specific patent information
 Patent document reference numbers and dates
 Applicants’ or inventors’ names
 Keywords
 Patent classification

Patent document reference numbers and dates

 Application number
 Publication number
 Priority number – if filed initially in another country
 Date of Filing
 Date of Publication
 Priority dates

How to Limit or Widen Keyword Search?

 Truncation/ word-stemming
 - uses wildcard characters such as * or ? to substitute for any other
character or characters when added next to a string of search terms.

How to Limit or Widen Keyword Search?

 attach* - attach, attached, attaching, attachment, attachable
 *attach - reattach (re-attach) *
 attach* - reattaching (re-attaching), reattached (re-attached specialization –
specialisation, specialization commerciali?ation – commercialisation,
commercialization
 Phrase searching using “ ”
o Examples: “electrical conductor”, “laser beam”, etc.
 Boolean Operators used to join words or concepts with defined TRUE or
FALSE operators such AND, OR, NOT, XOR, NEAR
 Parentheses (nesting) to clarify/order search queries
o wheel AND (steel OR alloy)
o not wheel AND steel OR alloy

FREE PATENT DATABASE

 WIPO PatenScope
 EPO Espacenet
 USPTO Patent Database
 JPO IPDL
 IPOPHL PhilPat Search

THOMSON INNOVATION
A commercial database that brings together the world's most comprehensive
patent collection, literature and business information for a complete and more
accurate research, analysis and reporting.

COLLECTIONS AND COVERAGE

 • Patent data (1863 to present)
• Scientific Literature
• Business and News

TOTALPATENT
The most extensive combination of patent content in a single place. Access
comprehensive, relevant results in a single search.

ADVANTAGES OF COMMERCIAL DATABASE

 Value added data
o corrections in the bibliographic data
o improved reclassification and indexing
o enhanced title and abstract
 Sophisticated Search and Analysis Tools
o Web-supported citation analysis
o On-line analysis-snapshot
 Provide integrated access to multiple sources of patent and nonpatent
literature
At present no database has complete coverage of all patent documents ever
published worldwide. Specific patent searches are sometimes best conducted
using both the information available on the Web and in patent databases.

PATENT SEARCH STRATEGIES

PATENT SEARCH CASE
1. Describe the Invention
a. What does it do?
b. What’s the end result?
c. What is it made of?
d. What is it used for?
2. How to Classify
Use the IPC Official Publication or the Index to US Patent
Classification to find potential classes and subclasses
Search for each term that describes the invention, e.g, function,
composition, etc.
Note class, subclass, group or subgroupfor each term

3. CONSIDER RELEVANT KEYWORDS & SYNONYMS

 Dog=> cat, pet, bird, animal, etc.
 Bowl=> dish, receptacle, cylinder, etc.
 Heat (as function)=>Warm, melt, temperature, frozen/freeze, etc.
 Heating element=>Electric/electricity, cord, battery, element, etc

4. USE APPROPRIATE SEARCH TOOLS

5. RETRIEVAL OF DOCUMENTS

Which database to use?

 Esp@cenet Patent Search
 USPTO PatFT/AppFT Search
 WIPO PatentScope
 IPOPHL PhilPat
 Thomson Innovation

Which field to search?

 Title, abstract, claims, full text
 Bibliographic data
 IPC/US Class
 Search Using USPTO PatFT/AppFT
USPTO Website has two searchable patent databases:
1. PatFT (Patents Full-Text)
Patents back to 1976 accessible by full-text keyword searching
All US Patents back to 1790 accessible by US Patent
Classification or Patent Number
2. AppFT (Published Patent Applications Full-te

6. Review Search Results

Can’t find appropriate classification?

 Do keyword search!
 Find relevant patents and take note of the IPCs
 Rerun the search using the newly found classification

Keyword searches should supplement the classification searches to be as

thorough as possible
 Group together synonyms eg (Car or automobile or auto or land motor
vehicle)
 Use truncation symbols $ for USPTO and * for Espacenet eg (elec$, elec*)
 Use quotes to group search phrases where words are adjacent (“dream
catcher”)

Remember Two Approaches Precision and Recall

Too BROAD search
Low PRECISION
Many IRRELEVANT documents to examine
Too NARROW search
Low RECALL
Many RELEVANT documents missed

Two Approaches
High precision – Increasing recall
Start with specific (unambiguous) terms only
Progressively add additional terms (dog->pet->animal)

High recall – Increasing precision

Structure (x) (bowl, dish->pet, animal)
 Function (x) (heating-> pet, animal)

PATENT SEARCH EXAMPLES

INTERNATIONAL PATENT CLASSIFICATION

 The International Patent Classification (IPC), established by the Strasbourg
Agreement 1971, provides for a hierarchical system of language independent
symbols for the classification of patents and utility models according to the
 different areas of technology to which they pertain. A new version of the IPC
enters into force each year on January 1.

WEBSITE
 https://worldwide.escapenet.com/

CASE 1:
The present invention relates to a so-called sweet toy which consists of foam sugar
paste and fruit gum. To attract the urge to play or the interest in playing with a sweet of
this type and to extend the possibilities of play, the sweet toy is characterized in that it
consists of at least three separate layers, the top layer and the bottom layer each
consisting of a foam sugar shell of rounded shape having a porous surface and a flat
cross-section, and at least one intermediate layer being formed as an essentially disc-
shaped or bar-shaped layer of fruit gum. The shape and the sequence of the different
layers corresponds to an imitation of the different layers of a traditional “hamburger”.
The last three layers of the sweet toy according to the invention can be fixed in their
mutual positions by an outer coating. Apart from the known hamburger imitation, the
sweet toy can likewise be formed as a frankfurter sausage imitation, a fish roll imitation,
club sandwich imitation and the like.

The present invention relates to a so-called sweet toy which consists, in particular, of
foam sugar paste and fruit gum.
Objectives:
1. To attract the urge to play or the interest in playing with a sweet of this type
2. To extend the possibilities of playing

OPTIONS/KEYWORDS:
 CANDY AND TOY
 CANDY AND LAYER
 TOY AND LAYER
 DATABASE SEARCH STRING SEARCH RESULT
Escapenet (Title or Abstract): 36
CANDY AND TOY
(Advance Search)
Escapenet (Title or Abstract): 131
CANDY AND LAYER
(Advance Search)
Escapenet (Title or Abstract): 7
(Advance Search) TOY AND LAYER

Search Result
 The invention is already available and no longer novel:
 Patent number: EP034981 A1
 Title: SWEET TOY
 Inventor: Merder Herbert
 IPC: A23G/00; A23G3/50; A23G3/52; A23G3/54; B65D85/60;
B65D75/12; (IPC1-7): A23G3/00; B65D85/80
 Priority number: DE19880008355U 19880630