# Presentation: 666895

##  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**** **

**Conference on Intellectual Property in the Global Marketplace**

## What is “Prior Art”?

***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...”***

**Notes:**
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.....

## “Prior art” is the technology that was known before.

**“****Prior art” is the technology that was known before.**

**What is “Prior Art”?**

**Notes:**
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.....

## 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.

**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.**

**Notes:**
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.....

## 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.**

## 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.**

## 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. GoogleTM)
Commercial databases
National patent office databases

**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. GoogleTM)**
**Commercial databases**
**National patent office databases**

**How Does One Start a ****Prior Art Search?**

## Searching for “Prior Art” in the Early  20th Century

## Searching for “Prior Art”

**Searching for “Prior Art”**
** ****in the 21****st**** Century**

## 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

**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**

**Patent Databases**

## Patents Search Page

**USPTO.gov**

**Complex**
** ****Searches**

**Patent **
**Number**

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

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

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

## 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.

***OR, AND, ANDNOT***
**And how to truncate words**
**elec$**
**This query would retrieve patents that contain the words *****electricity*****, *****electric*****, *****electronic*****, etc.**

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

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

**Full-text since 1976, full-page images since 1790**
**Published applications (AppFT)**
**Published since March 15, 2001**

**What is Available Online from ****the USPTO?**

## Searching the text of patent documents using keywords

Searching by patent classification and viewing the images

Combinations thereof

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

**Searching Techniques**

## 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**

## 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).**

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

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

**Introducing**

## IP Cosmetics, Inc.

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

## 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.**

## 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)**
**	**

** **

## USPTO Patent Database 

**Determining classes/subclasses:**

** **

## USPTO Patent Database 

**Determining classes/subclasses:**

** **

## USPTO Patent Database 

**Determining classes/subclasses:**

** **

## USPTO Patent Database 

**Determining classes/subclasses:**

** **

**(light bulbs)**

## USPTO Patent Database 

**Searching by class/subclass:**

** **

## USPTO Patent Database 

**Searching by class/subclass:**

** **

## Search Hits

## Search Hits

## Search Hits

## Search Hits

## 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.**

## Targeting a Search Using Classification

**Design Patents**

**All Patents**

**Targeting a Search Using Classification**

## Further Limiting the Search by Text Searching

**Further Limiting the Search by Text Searching**

**Design Patents**

**Possible Key Words**

## A Combined Classification and Text Search

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

## A Combined Classification and Text Search

## A Combined Classification and Text Search

## 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.**

## Donald.Tarazano@uspto.gov

THANK YOU

**Donald.Tarazano@uspto.gov**
**THANK YOU**

** ****Searching for Prior Art:**
**Moving From the Search Room **
**to the World Wide Web**