Prior Art Searching and Analysis

1.  Prior Art Searching and Analysis Katherine (Katie) McGuire, Esq. Partner University of Rochester Reg. Patent Attorney February 12, 2009

5. Types of searches Patentability � determining whether an invention is patentable; must consider the entire disclosure of the prior art State of the art � looks at a technology area generally to see what others are doing in a particular field Validity � determining whether an issued patent is valid; compare claims to the disclosures of the prior art Clearance or �Freedom to Operate� � determine whether there are third party patents that cover a product or process; specific emphasis on claims

7. What is �prior art�? 35 U.S.C. �102 - Conditions for patentability; novelty and loss of right to patent A person shall be entitled to a patent unless:

8. 102 (a) �Invention date� the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent,

9. 102(a) known or used by others

10. 102 (b) �more than one year prior to application date� the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States, or

12. (c) he has abandoned the invention, (tip: before you waste time searching, make sure this hasn�t happened)

13. (d) the invention was first patented or caused to be patented, or was the subject of an inventor's certificate, by the applicant or his legal representatives or assigns in a foreign country prior to the date of the application for patent in this country on an application for patent or inventor's certificate filed more than twelve months before the filing of the application in the United States, (Again, before you waste time searching, make sure this hasn�t happened)

16. f) he did not himself invent the subject matter sought to be patented, (e.g., cannot �derive� the invention from another)

17. (g)(1) during the course of an interference conducted under section 135 or section 291, another inventor involved therein establishes, to the extent permitted in section 104, that before such person's invention thereof the invention was made by such other inventor and not abandoned, suppressed, or concealed, or (2) before such person's invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it. In determining priority of invention under this subsection, there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other.

18. invention is shown by combining multiple prior art references or any difference over single reference is obvious Invention: A, B and C Prior Art reference �1�: A, B Prior Art reference �2�: C Examiner: �To combine 1 and 2 would have been obvious to one skilled in the art�.

19. Searching methodology

20. Step 1: Set out your search strategy  - attack the search on multiple fronts:

21. Step 2: Decide where to search Patent and/or Technical literature Worldwide or country-specific? Public databases Private (pay) databases Internet Manual searching Examiner consult

22. Public databases: Publically accessible databases include USPTO, EPO, and various other individual patent office websites, freepatentsonline.com, etc. Pros: free Cons: must perform searches in each individually; may have limited/different search capabilities; viewing/downloading can be difficult IP.COM � technical disclosures

23. Pay for databases/professional search firms: Examples: Lexis Total Patent Micropatent Technical literature (non-patent) (e.g., CAS, SciFinder, STN) Professional search firms (e.g., Science IP, many in the D.C. area)

24. Key word (Boolean) searching Use key words in various combinations with appropriate connectors, truncation and synonyms to develop one or more �search strings� Example: (ophthalm! or eye or contact or intraocular) and lens andnot camera

25. Search Key words in entire or different parts of application. E.g., Can search title, claims, abstract, specification individually

26. Field searching Assignee (who are the players in this technology area?) Inventors (notable or prolific?) Issue date range (e.g., clearance searching only requires last 20 years) Patent/pub/serial number Cited references

28. Once you find a patent of interest, it may lead you in other directions: Inventor/assignee search Forward and backward citation; look at the non-patent art for possible sources of additional relevant art www.uspto.gov http://ep.espacenet.com Patent family and legal status (for clearance searching)

29. Classification searching U.S. patent classification system International patent classification system

33. Step 3: gather results and analyze

34. Analysis tools Quickly analyze hundreds to thousands of patent records to extract meaningful information to guide strategic business decisions. Examples: http://www.thomsoninnovation.com/ http://www.patentinsightpro.com/ www.matheo-patent.com PatGraph

35. Who are the major players in this field? How mature is this technology? What sub-technologies may be relevant to this technology? In what countries of the world is this technology being patented?

38. Number of Records by Technology and Year

40. Ongoing Patent Surveillance Run search strings weekly to monitor world-wide publications in technology area of interest. Can be run automatically with results sent to your email.