The Peculiar Searching Habits of North American Patent Searchers

-Attorney Confidential-

3LP Advisors

The Peculiar Searching Habits
of the North American Patent
Searcher

Anthony Trippe – Director, IP Analytics
March, 2011 - Intl. Symposium on IPR Information Dissemination, Taipei, Taiwan

Copyright 3LP Advisors - 2008
Copyright 3LP Advisors - 2011 1


Sources covered
 USPTO
– Granted patents database
– Published applications database
– Public PAIR
– Maintenance database
– Assignment database
– US Classifications

 Free services
– Google patents
– Patent Lens
– Patent Calls
– PriorSmart

 For-fee services
– Thomson Innovation
– STN International
– Questel



USPTO – Granted Patents Database

 http://patft.uspto.gov/netahtml/PTO/search-adv.htm - Advanced Search

 Inventors are encouraged to search the USPTO’s patent database to see if a
patent has already been filed or granted that is similar to your patent.
Patents may be searched in the USPTO Patent Full-Text and Image
Database (PatFT). The USPTO houses full text for patents issued from 1976
to the present and TIFF images for all patents from 1790 to the present.
 Searching can be done on:
– Quick Search
– Advanced Search
– Patent Number Search
 Images also available with downloadable plug-in
 Advanced search relies on the use of fields and can incorporate Boolean
queries
– ttl/(tennis and (racquet or racket))



USPTO – Granted Patents Database – Image



USPTO – Published Applications Database

 http://appft1.uspto.gov/netahtml/PTO/search-bool.html - Quick Search

 Search for Full-Text and Image versions of patent applications. Customize
searches on all fields of a patent application in the AppFT for Full-Text
searches.
 Searching can be done on:
– Quick Search
– Advanced Search
– Patent Number Search
 Images also available with downloadable plug-in
 Advanced search relies on the use of fields and can incorporate Boolean
queries
– ttl/needle or ttl/syringe andnot (sew or thread$)



USPTO – Published Applications Database – Image



USPTO – Public PAIR

 http://portal.uspto.gov/external/portal/pair - Public PAIR

 The Patent Application Information Retrieval (PAIR) system provides IP
customers a safe, simple, and secure way to retrieve and download
information regarding patent application status.
 Requires Re-Capcha for entrance
 Search by application number, patent number or publication number
 Provides electronic file wrappers for past several years
 Can be used to follow continuations
 Provides a portal into the maintenance database
 One of the only ways to check migration from published application to
granted patent
 Private PAIR also exists but you need to have a certificate and access to
applications filed less than 18 months ago



USPTO – Public PAIR – Image



USPTO – Maintenance Database

 https://ramps.uspto.gov/eram/patentMaintFees.do - Maintenance database

 All utility patents which issue from applications filed on or after December
12, 1980 are subject to maintenance fees, which must be paid to maintain
the patent in force. These fees are due 3 1/2, 7 1/2 and 11 1/2 years from
the date of the original patent grant. Fee payments must include both
patent and application numbers. If the fee is being paid for reissue, the
application number required is the reissue application number.
 Requires patent number and application number
 Use the Get Bibliographic Data button to access report on maintenance of
particular patent
 When does fee window open and close
 Which fee period is due
 Is the company a large entity or small entity



USPTO – Maintenance Database – Image



USPTO – Assignment Database

 http://assignments.uspto.gov/assignments/?db=pat

 During examination of a pending patent application or after registration, the owner of
the mark may change: 1) the original owner may transfer ownership to another
entity or party, through an “assignment;” or 2) the original owner may retain
ownership but change its name. The original owner should record the assignment or
name change with the USPTO’s Assignment Services Division by filing a Recordation
Cover Sheet along with a copy of the actual assignment or proof of name change.
 Electronic Patent Assignment System (EPAS)
– Use EPAS to create and submit a Patent Assignment Recordation Coversheet by
completing on-line web forms and attaching the supporting legal documentation
as black and white TIFF or PDF for submission via the internet.
 Assignments on the Web for Patents (AOTW-P)
– Use AOTW-P to search the database of all recorded Patent Assignment
information from 1955 to the present (Trademark Assignments recorded prior to
1955 are maintained at the National Archives and Records Administration).



USPTO – Assignment Database – Image



USPTO – US Classifications

 http://www.uspto.gov/web/patents/classification/ - US Classifications

 The Office of Patent Classification maintains the U.S. Patent Classification
system.
 Recently announced that USPTO will cooperate with European Patent Office
to create a unified classification system which will be based on EPO ECLA
and will be jointly developed by both offices
 Currently IPC codes are assigned based on a concordance
 Existing US classification system will be merged with ECLA in new
classification system
 Search by class and subclass
 Identify US to IPC8 concordance
 Identify US to Locarno concordance



USPTO – US Classifications – Images



Free Services – Google Patents

 http://www.google.com/patents

 Google and the USPTO have entered into an agreement to make bulk
patent and trademark data available to the public at no charge
 Quick search allows searching by patent or publication number
 Publication number searching requires year/publication number format
(2002/123456 for instance) where most other systems would only require
yearpublication number (2002123456)
 US only
 Spotty coverage of pre-grant publications
 Provides claims, images and citations readily
 Uses Google Book technology to allow for searching and highlighting of text
within the body of the patents
 Advanced search also available



Free Services – Google Patents – Images



Free Services – Patent Lens

 http://www.patentlens.net/daisy/patentlens/patentlens.html

 Patent search interface in Chinese ( ), English, Russian (Русский), and
French
 Full text of PCT applications now searchable in Chinese, English, French,
German, Japanese, Korean, Russian and Spanish
 Full text of EPO patents now searchable in English, French and German
 Search for lapsed, abandoned or expired US Patents
 Visualize Patent Families with new graphical trees as PDFs
– Unique feature
– A pretty good attempt at a difficult concept
 Includes Patent Family and Status including link to Public PAIR
 Free Full-text Worldwide Patent Searching - 10,702,297 patent documents -
updated Dec 21, 2010



Free Services – Patent Lens – Image



Free Services – Patent Lens – Image Family Tree



Free Services – Patent Calls

 http://patentcalls.com/ - Patent Calls

 Patent Calls™ combines expert IP research and state of the art software
search and analysis tools - Connecting Patents to ProductsSM.
 Provides maintenance information with “stop-light” indicators
 Provides information on post-issuance documents
 Allows comparison of applied for claims vs. granted claims
– One of the few sites that do this
– Very powerful for quickly seeing the effects of examination on the original claims
 Provides PDF images, citations, references and prior art
 US patents and applications only



Free Services – Patent Calls – Image



Free Services – PriorSmart

 http://news.priorsmart.com/

 Best known for US litigation daily email
– Let me know if you would like an invitation
 Provides free searching
 Provides list of new patent litigations in the US
 Provides list of patent related Twitter activity
 Provides list of patent related blog posts
 Other services available by request



Free Services – PriorSmart – Image



For-Fee Services – Thomson Innovation
 http://www.thomsoninnovation.com/

 Thomson Innovation is a single, integrated solution that combines intellectual
property, scientific literature, business data and news with analytic, collaboration
and alerting tools in a robust platform
 Includes Worldwide patent data including full-text content of many countries
 Includes Derwent World Patents Index
 Includes scientific literature and business documents as well as patents
 Forms based searching
 Subscription service
– Multiple users can subscribe at various levels with various features
– Analyst level provides all analytical features and most liberal ability to download
information for analysis in Excel
• Includes ThemeScape – Thematic mapping application
• Includes citation trees
• Includes text-clustering feature
• Includes charting and graph service


For-Fee Services – Thomson Innovation – Image



For-Fee Services – STN International

 http://www.cas.org – STN International in North America

 CAS' STN databases offer the largest collection and depth of chemical and
related information compared to other commercial web based databases. In
addition, CAS is the only company that has a unique, proprietary, chemical
structure searching capability using its STN Express software. No other
source can successfully meet the USPTO's requirements.
 Best system for chemical structure based searching
 Command line, Boolean based searching system
 Includes nearly 200 databases including CAS, DWPI, patent, and non-
patent databases
 Provides access to STN AnaVist for advanced analysis and visualization of
patent and non-patent records from CAplus, DWPI and selected patent
databases
 Subscription service – pay by connect hour, search terms and display fees



For-Fee Services – STN International – Image



For-Fee Services - Questel

 http://www.questel.com/emailing/emailing_200909_ecommunique_Patents.
htm

 Provides command line driven interface as well as new form based interface
called orbit.com
 Provides MMS system for searching Markush chemical structures from
French Patent Office (INPI) and Derwent (Thomson)
 Also provides chemical structure searching
 Analysis products allow:
– Analyze documents by date, country, priority country, publication, and priority
country timeline
– Detect assignees colaboration and top assignees
– Measure technologies, assignees, etc. by IPCs
– Identify cited and citing patents.



For-Fee Services – Questel – Image



For-Fee Services – ProQuest Dialog

 http://www.dialog.com/products/guide/ip.shtml

 The new ProQuest Dialog™ offers an intuitive interface which simplifies
access to our breadth of content for researchers of all kinds. It is an
exciting approach to precision search based on relevancy, transparency,
control and completeness.
 Provides command line driven interface as well as new form based interface
 Provides more than 200 databases including many popular patent
databases
 Includes most comprehensive collection of non-patent databases


Patent Information Users Group, Inc.
The International Society for
Patent Information
2010 Update

31

3LP Advisors

Who are PIUG members?
 PIUG has over 700 active members from 27 countries
with the largest concentration of members from the
USA, Europe and Japan
– PIUG members are patent attorneys, patent
agents, licensing professionals, patent information
researchers, patent information vendors, and patent
information and documentation experts
– PIUG members are employed in performing
patentability, freedom-to-practice, and validity patent
searches for Fortune 500 / multinational
companies, leading universities and major IP law
firms
– PIUG members produce many of the tools used for
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Copyright 3LP Advisorspatent searching and analysis
- 2009

3LP Advisors

What benefits does PIUG provide?

 PIUG has an active Discussion Forum that is featured on
the PIUG wiki, a global collaborative tool with over 1350
subscribers worldwide
– Members access to conference presentations, etc.
 PIUG schedules three annual meetings that provide
education and networking opportunities
 PIUG is developing training materials and working in
collaboration with other professional patent
organizations towards international certification
 Chinese chapter with over 100 members –
http://piug.org.cn
33

3LP Advisors

Upcoming PIUG events

 PIUG Annual Conference – Cincinnati, OH
– 21-26 May 2011

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