1. Searching for Prior Art: Moving From the Search Room
Conference on Intellectual Property in the Global Marketplace
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 

2. 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…”
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…..

3. What is “Prior Art”?
“Prior art” is the technology that was known before.
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…..

4. What Constitutes Prior Art Against a U.S. Patent Application?
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.
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…..

5. 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.

6. 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.
TARGET THE SEARCH!

7. How Does One Start a Prior Art Search?
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. Google™)
Commercial databases
National patent office databases

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

9. Searching for “Prior Art”
in the 21st Century

10. Patent Databases
The USPTO allows the public to freely search on our Web site, USPTO.gov
Additionally, other national offices allow you to search their databases. The Japanese even provide some information in English.
European patent databases:
Japanese patent database:

11. Patents Search Page
Complex
Searches
Patent
Number
USPTO.gov

12. How to Search the U.S. Patent Database on USTPO.gov
The Web site gives extensive information of what fields may be searched.

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

14. What is Available Online from the USPTO?
Issued patents (PatFT)
Full-text since 1976, full-page images since 1790
Published applications (AppFT)
Published since March 15, 2001

15. Searching Techniques
Searching the text of patent documents using keywords
Searching by patent classification and viewing the images
Combinations thereof

16. 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

17. 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).

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

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

20. 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.

21. 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)

22. USPTO Patent Database
Determining classes/subclasses:

23. USPTO Patent Database
Determining classes/subclasses:

24. USPTO Patent Database
Determining classes/subclasses:

25. USPTO Patent Database
Determining classes/subclasses:
(light bulbs)

26. USPTO Patent Database
Searching by class/subclass:

27. USPTO Patent Database
Searching by class/subclass:

28. Search Hits

29. Search Hits

30. Search Hits

31. Search Hits

32. 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.

33. Targeting a Search Using Classification
Design Patents
on Actual Light Bulbs
All Patents
Design Patents

34. Further Limiting the Search by Text Searching
Possible Key Words
Lightbulb
Light Bulb
Light Bulbs
Lite Bulb
Container
Bottle
Holder
Support
Design Patents

35. A Combined Classification and Text Search
A text search for light bulb including the terms holder or support

36. A Combined Classification and Text Search

37. A Combined Classification and Text Search

38. 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.

39. Donald.Tarazano@uspto.gov THANK YOU
Conference on Intellectual Property in the Global Marketplace
Searching for Prior Art:
Moving From the Search Room
to the World Wide Web
THANK YOU