Law Office of Alicia Porter

Allright, I admit it…. I am a Quick Search junkie on the USPTO web site. It’s not that I have this overwhelming desire to spend extra hours going through patent by patent, or that I have this sick and twisted desire to use Boolean search phrases such as “andnot” or to count characters( after all, one cannot have more than 1475 characters in each search – I know from personal experience).

But I like Quick Search, as it’s the closest I am ever going to personally get to something like “Deal or No Deal”. It’s fun to tweak with the phrasing a little bit, to see if you can eliminate more of the numbers in the search to make it more reasonable. For example, add two terms and exclude two terms, and your generic search went from 1400 hits to 250 hits. But it’s also kind of fun to see what other words get brought up during Quick Search, and then wondering “hey, can my client’s idea be used in that way? Perhaps I should check out the application”. What can I say, other than it’s a fun little tool to help figure out which classifications are really the place to focus my search?

And who knows, I might get lucky, with the right buzz words and narrow my search to 10 patents or less…

Earlier this week, I posted on how to search for a patent through Quick Search. It’s my personal favorite toy on the USPTO web page.

However, there are other ways to search. There are also ways that a patent examiner is expected to search, which helps a patent practitioner determine how best to streamline the search they make on behalf of a client.

Under the Manual of Patent Examining Procedure (otherwise known as the MPEP in government speak or i.e. the Bible to practitioners) section 904.02 outlines how an examiner should look at reviewing a patent application.

The examiner must

a) identify the field of search

b) select the proper tool(s) to perform the search (keep in mind, the more sophisticated the technology, such as recominant DNA, the more specifity one needs to have with the tools)

c) determine the proper search strategy for each search tool selected.

Each search for each patent application must be done on a case by case basis, so the examiner, depending on the application, may select a completely different set of search tools for application A vs. application B.

Here’s where you start to look on a search – first you hit the domestic (US) patents, then the domestic patent applications, then the foreign patents, and, last but not least, the non patent literature. Examiners should look at all four categories. A good practitioner should do the same, as a thorough search translates to a more efficient patent proescution, which means more time that your client has to maximize their patent rights.

Back again to the places to search for patents that may affect a patent application. A good patent application should include a proper search of the foreign patents that are available as well.

The big ones are the European Patent Office and the Japanese Patent Office. The WIPO web page (World Intellectual Property Organization) is fantastic as well.

http://www.espacenet.com/

This is a site that has been constructed for patent searches for all three governments. Where the language on the patent applications isn’t English, then there’s German, French or the language from where the patent was created.

The really nice thing about this site is that there are multiple tutorials. The tutorials are depressing at times when you realize how utterly different the European system is (and how low your score is when first trying the tutorial), for example, compared to the US system. The tutoriasl are also enlightening about how easy it is to master one system, such as the US system and then have to re-think your thought processes for
the European patent system. They are short, and comprehensive, and help master the system quickly.

Some of the points that you can pick up doing the tutorials are quick- for example, no more than four search words. Others are completely different – for example the applicant may be, but need not be, the inventor. In the US, the inventor is the only one who has the right to apply for the patent.