introduction to patent searching

Introduction to Patent Searching

UCONN Technology Incubation Program, Farmington, CT

Robert Kasten, Patent Agent*203-772-7729 | rkasten@murthalaw.com

*Not an attorney; nothing in this presentation is intended to include legal advice

Why would you do your own search?

• Save money

• Save time and other resources

• Learn what your competition is doing

• Learn from the mistakes of others/take all available shortcuts

• What space is left for you to innovate?

What are we looking for?

What counts as prior art?

• Searchable

Patents

Published patent applications

Published journal articles

Presentations/presentation abstracts

• Non-Searchable

Sales/offers for sale

Unpublished patent applications

What does the USPTO ask its Examiners to do?

How do Examiners Search?

What Kind of Search Do You Need?

FTO v. Patentability

Patentability

• Patent focused

• Patent and NPL important

• Whole patent

• Everywhere

Freedom To Operate

• Commercially focused

• Patents only

• Patent claims only*****

• Territorial

Design-Around

How to Search, Where to Search

How to Search?

• What kind of search do you need?

• Where are you looking to do business?

• What resources do you need to use to find relevant references?

• Compile search terms. What is your invention?

How to Search?

• What kind of search do you need?

• Where do you need protection?

• What resources do you need to use?

• Compile search terms. What is your invention?

• Execute your search.

• Review search results.

• Review cited references.

• Assignee and Inventor search.

• Iterate!

RESULTS ARE NOT AN OPINION ON PATENTABILITY

DUTY TO DISCLOSE

Where to search…

• Publically Available Patent Databases

• Classifications• Cooperative Patent Classification (CPC)• International Patent Classification (IPC)• United States Patent Classification (USPC)

• US Patent and Trademark Resource Center

• Relevant Trade Sources (PubMED, ScienceDirect, SpringerLink, trade journals, and the like)

COOPERATIVE PATENT CLASSIFICATION

H 01 F 1/00

Section

COOPERATIVE PATENT CLASSIFICATION

COOPERATIVE PATENT CLASSIFICATION

H 01 F 1/00

Class

COOPERATIVE PATENT CLASSIFICATION

COOPERATIVE PATENT CLASSIFICATION

H 01 F 1/00

Subclass

COOPERATIVE PATENT CLASSIFICATION

COOPERATIVE PATENT CLASSIFICATION

H 01 F 1/00

Group

COOPERATIVE PATENT CLASSIFICATION

Where to search…

www.uspto.gov

Where to search…

Where to search…

Where to search…

CPC/H01F1/00

Where to search…

Where to search…

www.epo.org

Where to search…

H01F1/00

Where to search…

patentscope.wipo.int

How to search…

PCT/JP2013/072194

How to search…

Other Resources…

www.freepatentsonline.com

Other Resources…

Other Resources…

pubchem.ncbi.nlm.nih.gov

Other Resources…

Other Resources…

Other Resources…

blast.ncbi.nlm.nih.gov

Other Resources…

Other Resources…

Questions?

Robert Kasten203-772-7729 | rkasten@murthalaw.com

THANK YOU!