When I meet with a client to discuss the possibility of their obtaining patent protection for a new product or process (their invention), the discussion usually begins with my asking if they have done any initial patentability research for their invention. Often, the client has already done some initial patentability research online. This is a good first step in determining the patentability of the invention. If the invention or something similar to the invention is found by the online research, a decision can be made that the invention is likely not patentable. This decision is arrived at without incurring any expense involved in having a professional search firm conduct a patentability search.
Basically, online research involves conducting a word search of publications using one or more of the many available search engines. The words searched are common terms typically used in describing component parts and/or the operation of the invention. Say, for example, the invention is a hiking boot with a built in GPS system to help hikers from getting lost in the woods. The words searched could be “boot” and “GPS”. The word search doesn’t cost anything other than the time spent by the person conducting the search. If the word search results in the discovery of the invention, or something very similar to the invention, it is then very likely that the invention is not patentable.
However, if after conducting online research the invention or something similar to the invention is not found, this is still not an indication that the invention is possibly patentable. It is likely there are many different terms that could be used to describe an invention and/or the component parts of an invention. For example, if the invention is a tool having a handle that pivots around a pivot axis, an online word search for “handle”, “pivots” and “pivot axis” will likely not uncover a publication that describes a tool having “hand grips” that “rotate” around an axis. A word search for a tool having a “handle” will likely not uncover a publication that describes a tool having “hand grips”, and a word search for a tool having a handle that “pivots” will likely not uncover a publication that describes a tool having a handle that “rotates”. In order to increase the likelihood that an online word search for an invention is thorough, the person conducting the research must be able to think of all of the different terms that could possibly be used to describe the invention and the component parts of the invention.
Many are not aware that the U.S. Patent Office provides a patent Search Strategy Guide that can be used to search for U.S. patents and published patent applications to augment any online word search conducted for an invention. The patent Search Strategy Guide can be accessed online by first going to the Patent Office website at the www.uspto.gov. This will open the Patent and Trademark Office home page. From here, click on “Search for patents” on the left side of the home page. This will lead you to information on searching for patents and published patent applications and a seven step strategy guide. Clicking on “detailed handout” will lead you to the “7-Step U.S. Patent Search Strategy Guide”.
The Search Strategy Guide makes use of the Cooperative Patent Classification (CPC) scheme. The CPC classifies U.S. patents and published patent applications according to their technology in basically the same manner that the Dewey Decimal Classification System classifies library books according to their area of knowledge. In a manner similar to the Dewey Decimal System, the CPC system classifies U.S. patents and patent publications under main classes of technology. Each main class of technology is then further structured into hierarchical subclasses, with each hierarchical subclass having increasing specificity. Every U.S. patent application filed at the U.S. Patent and Trademark Office is assigned to at least one class and subclass in the CPC system. The application is then assigned to the docket of a Patent Office Examiner that examines patent applications in that particular class and subclass.
The Search Strategy Guide provided by the U.S. Patent Office makes use of the CPC system to locate U.S. Patents and published patent applications that are pertinent to the invention being researched. The Search Strategy Guide provides a seven step procedure to follow when conducting research for an invention using the CPC system. However, as is sometimes the case with instructions prepared by the federal government, the seven step Search Strategy Guide can be confusing and unclear. This article goes through the seven step Search Strategy Guide provided by the Patent Office and attempts to clarify the Guide and make it easier to use.
Step 1 of the Search Strategy Guide is basically the same step 1 involved in conducting an online word search using one or more search engines. In step 1 words are chosen that describe the invention. In the example provided by the Patent Office Search Strategy Guide, the invention is an umbrella having a new rib design that resists the umbrella collapsing or inverting when subjected to high winds. In step 1 of the Patent Office Search Strategy Guide there is a lot of work involved in describing the purpose of the umbrella, whether the umbrella is a process or product, what the umbrella is made of and how the umbrella is used. In my opinion, not all this work is necessary. I think step 1 can be simplified just by coming up with some basic, common terms to describe the umbrella, such as “umbrella” and “wind”.
Step 2 of the Search Strategy Guide involves using the CPC classification system to come up with a class and subclass of the CPC system in which the umbrella would be classified. This involves first going to the U.S. Patent Office website at www.uspto.gov. When the Home page opens, locate the rectangular box with “Search uspto.gov”. This is located at the upper right-hand corner of the Home page. Because you are going to conduct a search in the cooperative patent classifications (CPC) system or scheme, in the rectangle box type “CPC scheme”. Because you are going to search for U.S. patents and published patent applications for umbrellas, also type in “umbrella”. The search terms in the rectangular box should now be “CPC scheme umbrella”. Now click enter on your keyboard or click on the magnifying glass to the right of the rectangular box.
This will open a list of different search results, each positioned in a rectangular frame. The top search result in the list of search results should be the most pertinent. In the Patent Office example, this search result is titled “CPC Scheme – A45B WALKING STICKS; UMBRELLAS; LADIES’, OR” Position your cursor over the title and click.
This opens a page with the title “COOPERATIVE PATENT CLASSIFICATION“. Below the title, on the left-hand side is a subclassification “A45B“. In this subclassification, the “A” stands for the class or CPC section titled “HUMAN NECESSITIES“. “A45” stands for the further divided subclass for “hand or traveling articles”. The further subdivided subclass “A45B” is for “walking sticks; umbrellas, ladies’ or like fans“.
Scrolling down the page it can be seen that the subclass “A45B” is further divided into subclasses. For example, “A45B 1/00” is for “Sticks with supporting, hanging or carrying means“. Patents and published patent applications that disclose sticks with supporting, hanging or carrying means are assigned this class and subclass. Just below this is a further divided subclass of “A45B 1/02” for “Walking sticks with rollers for carrying parcels or the like”. This subclass is indented from the subclass above it, meaning that subclass “A45B 1/02” is more specific than subclass “A45B 1/00“.
To find a class and subclass that is pertinent to the umbrella having ribs that resist high winds that is the subject of the research, the page is scrolled down while reading the titles and subtitles of each subclass. While scrolling down, the subclass “A45B 25/00” for “Details of umbrellas” comes into view. A rib of an umbrella that resists high winds is a detail of an umbrella. Scrolling further down it is noted that subclass “A45B 25/22” is for “Devices for increasing the resistance of umbrellas to wind”. This appears to be the most pertinent subclass for the umbrella invention that is the subject of the research.
Note that the subclass A45B 25/22 is underlined. This indicates that by clicking on the subclass a definition of the devices assigned to this subclass will open. Any U.S. patent or published patent application that discloses a device for increasing the resistance of an umbrella to wind will be assigned to this subclass. The subclass A45B 25/22 is written down for the next step of the search strategy.
Next, return to the Patent and Trademark Office home page by going to www.uspto.gov. With the home page opened, look for the green rectangle with the “Quick links” label. This is at the upper, right of the page. Position your cursor over the green rectangle. A column labeled “Patents” and a column labeled “Trademarks” will appear. Move your cursor to the “Patents” column and position your cursor over “PatFT”. This stands for patent full text. Click on “PatFT”.
This will open a page that can be used to search for U.S. patents in the subclass found earlier. Two rectangular boxes are provided for inserting search terms, and two rectangular boxes are provided for inserting search fields. Only the box labeled “Term 1” and the box labeled “Field 1” will be used. In the box labeled “Term 1” insert the subclass “A45B25/22” found earlier in the research. Note that there is no space between “A45B” and “25/22”. In the “Field 1” rectangle, click on the downward pointing arrowhead to identify the fields available for research. Locate the field “Current CPC Classification” and click on it to enter this field in the “Field 1” rectangle. Now position your cursor over the “Search” rectangle and click.
This opens a list of the first 50 of 128 U.S. patents that have been assigned the classification of “A45B 25/22”. From reading the titles of the patents in the list, it appears that several may be pertinent to the umbrella that is the subject of the research. To view a particular patent, position your cursor over the number or the title of the patent and click.
This opens the text of the selected patent. To view the drawings of the patent, position your cursor over the red rectangle with “Images” at the top, center of the page. Click on this rectangle to open the images of the selected patent.
At this point of the research I encounter problems using my office computer. I don’t know if it is due to our office security software or SPAM filter, but the images do not open using my office computer. There is a red “Help” link toward the top center of the page. Clicking on “Help” leads me to a Help page with several other links, one of which is titled “How to Access Patent Full-page Images”. Clicking on this link leads me to a page with instructions on how I can install free software to view the patent images. However, my office computer does not allow me to download the software.
As an alternative to using the Patent Office website to obtain patent images, I go to the European Patent Office website at https://worldwide.espacenet.com. This opens a page of the European Patent Office website with the title “Espacenet: free access to the database of over 90 million patents“. On this page there is a long rectangle labeled “Smart search:”. In this rectangle I type in “US” followed by the U.S. patent number I desire to view from the list of patents found in Step 4. For example, I would type in “US8783275” for the U.S. patent titled “Compact folding umbrella with hybrid ribs to resist damage due to inversion” I then click on “Search” to the right of the rectangle.
This opens a page of the European Patent Office website that lists the title of the U.S. patent that I want to review. I click on “Compact Folding Umbrella with Hybrid Ribs to Resist Damage Due to Inversion”.
This opens another page of the EPO website with information on the published patent application of the patent I want to review. I note that the patent is identified by its U.S. patent publication number US2013228203. Toward the middle of the page I note a line labeled “Also published as:” where the patent number “US8783275(B2)” is listed. I click on this U.S. patent number and this opens a further page with the title “Original document: US 8783275 (B2) – 2014-07-22” at the top. To the right I identify a “Download” link. I click on the “Download” link.
This opens up prompt box to enter a string of digits for the Espacenet verification. I enter the string of digits in the rectangle and click “submit” to the right of the prompt box. Another rectangle appears which prompts me to say whether I want to open or save the document. At the bottom of the page I locate the gray rectangle labeled “Open” and click on the rectangle. This opens a copy of the U.S. patent No. 8,783,275″. I can view the complete U.S. patent from this page. I can also print a copy of the patent from this page.
Using the steps above, I use the European Patent Office website for reviewing U.S. patents and printing U.S. patents when I have trouble doing these using the U.S. Patent and Trademark Office website.
In step 5 the patents having the most pertinent titles in the list of patents obtained in step 4 are reviewed. Using the U.S. Patent and Trademark Office website, or using the European Patent Office website, copies of the patents considered to be most relevant can be printed or downloaded.
Having located relevant U.S. patents, the research can now move to search for relevant U.S. Patent Publications. This is done in basically the same manner as searching for U.S. patents.
This step of the research begins by again going to the U.S. Patent and Trademark Office website at www.uspto.gov. On the home page, the green rectangle labeled “Quick links” to the upper, right of the home page is identified. Positioning your cursor over the green rectangle opens the window having the “Patents” column to the left and the “Trademarks” column to the right. Your cursor is then positioned over “AppFT” in the “Patents” column. Clicking on “AppFT” again opens the search page having the rectangle labeled “Term 1” and the rectangle labeled “Feld 1”.
The earlier identified subclass “A45B25/22 “is typed into the rectangle labeled “Term 1”. The downward pointing arrow in the rectangle labeled “Field 1” is clicked on, opening the list of fields. The “Current CPC Classification” field is located and clicked on. With the subclass “A45B25/22” in the “Term 1” rectangle and “Current CPC Classification” in the Field 1 rectangle, the “Search” rectangle is clicked on. This opens a list of the first 50 of 108 published patent applications that are classified in the subclass A45B 25/22. As was done with the list of patents uncovered by the research in step 4, the titles of the published patent applications can now be reviewed and the publications considered to be most relevant can be identified and written down. In the same manner discussed earlier with regard to obtaining copies of the patents using either the U.S. Patent Office website or the European Patent Office website, copies of the relevant publications can be printed out.
Step 7 of the Search Strategy Guide provided by the U.S. Patent and Trademark Office website gives suggestions on how to broaden your patentability research should your initial U.S. patent and published patent application research fail to identify patents or patent publications that disclose subject matter similar to the invention being researched.
As stated earlier, the research is useful in determining that your invention is likely not patentable. You should keep in mind at the conclusion of your research that failing to identify any information through an online search or through a patent and patent publication search using the Patent Office Search Strategy Guide is still not an indication that your invention is possibly patentable.
There is always a risk that information pertinent to the patentability of an invention will not be uncovered by any type of research conducted for the invention, whether you yourself conduct the research, or whether the research is done by a professional research firm.