Searching for Prior Art:

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Conference on Intellectual Property in the Global
Marketplace
Searching for Prior Art Moving From the Search
Room to the World Wide Web
Larry Tarazano  Primary Examiner Technology
Center 1700 U.S. Patent and Trademark Office 
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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

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What is Prior Art?

• Prior art is the technology that was known
  before.

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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.

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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.

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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.
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How Does One Start a Prior Art 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

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Searching for Prior Art in the Early 20th
Century
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Searching for Prior Art in the 21st Century
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Patent Databases

• 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

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Patents Search Page
Complex Searches
Patent Number
USPTO.gov
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How to Search the U.S. Patent Database on
USTPO.gov

• The Web site gives extensive information of what
  fields may be searched.

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How to Search the U.S. Patent Database on
USTPO.gov

• 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.

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What is Available Online from the USPTO?

• Issued patents (PatFT)
• Full-text since 1976, full-page images since 1790
• Published applications (AppFT)
• Published since March 15, 2001

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Searching Techniques

• Searching the text of patent documents using
  keywords
• Searching by patent classification and viewing
  the images
• Combinations thereof

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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

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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).

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Introducing

• IP Cosmetics, Inc.
• and the toils of finding
• prior art
• on the design of their bottle

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IP Cosmetics, Inc.

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

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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.

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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)

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USPTO Patent Database

• Determining classes/subclasses

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USPTO Patent Database

• Determining classes/subclasses

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USPTO Patent Database

• Determining classes/subclasses

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USPTO Patent Database

• Determining classes/subclasses

(light bulbs)

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USPTO Patent Database

• Searching by class/subclass

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USPTO Patent Database

• Searching by class/subclass

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Search Hits
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Search Hits
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Search Hits
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Search Hits
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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.

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Targeting a Search Using Classification
All Patents
Design Patents
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Further Limiting the Search by Text Searching

• Possible Key Words

Design Patents
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A Combined Classification and Text Search

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

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A Combined Classification and Text Search
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A Combined Classification and Text Search
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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.

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Conference on Intellectual Property in the Global
Marketplace
Searching for Prior Art Moving From the Search
Room to the World Wide Web

• Donald.Tarazano_at_uspto.gov
• THANK YOU