Old School Patent Searching –

In years past, when clients have had an interest in doing some initial patent searching on their own, we have referred them to the United States Patent and Trademark Office site¹ for searching issued US patents and published patent applications.  For such searches, the USPTO recommends a structured “Seven Step Strategy²,” which includes the identification of the Class and Subclass(es) of the particular invention to be searched.

This procedure would be used for a situation³ in which a client has an invention and wishes to search the patent literature to determine if there is any prior art there that would likely be a bar to obtaining a patent on the invention.  For broader searches that include foreign patent literature, additional searching can be done at the European Patent Office search site, Espacenet⁴, and the World Intellectual Property Organization search site, PatentScope⁵.  Patent searching via these three sites is effective if done diligently.

But it is also tedious.  On the USPTO website, there are separate search pages for patents and published applications.  Thus if you wish to do either a keyword search or a class/subclass search, essentially separate searches must be performed on each page.  A considerable amount of time may be spent looking at redundant results, because a large share of the published applications issue as patents, and will thus turn up in both searches.  You have no way of filtering out the redundant content when performing the two separate searches.  Then, once you have identified a patent reference as being “of interest,” in order to obtain a pdf of the actual reference, it is most effective to do so at a third party site, such as freepatentsonline.com.  The USPTO does not currently have an efficient pdf delivery system.

After you have finished your U.S. search, if you want to search for foreign patents, you move on to Espacenet or PatentScope.  Each of these sites has its own “user interface challenges.”  Thus there is a learning curve to becoming passably competent in searching on each of them.

Moreover, there are other types of patent searching that can provide critical business information other than the above “prior art” searching that is essential to predicting patentability of an invention.  It is common to need to search for information on a known patent or published application, such as for intelligence on a competitor, or for due diligence in a possible acquisition.  For example, you might need to know who owns a particular patent or application.  Is the title clear? Are there any liens on it?  For an application, what is its status in prosecution?  For an issued patent, is it still in force, or has it expired due to non-payment of maintenance fees?

These are some of the key questions that can be answered by such searching⁶.  However, accessing the information in the USPTO is again a bit tedious.  The data on assignments and ownership, maintenance, and prosecution are all of public record, but are all provided on separate searching systems.  Thus doing a thorough search on a patent or published application requires some detailed knowledge on how to access each of these systems separately.  (Although there are some commercial sites that compile the information more efficiently, they tend to be subscription-based and expensive, and are thus more appropriate for large volume users who have an ongoing need.  It is much more common to need to do a “one and done” search.)  A due diligence search in the USPTO will likely leave you thinking, wouldn’t it be nice if all of the information on this patent was in one place?

New School – Google Patents

To a large extent, this information – and much more – now is in one place, on Google Patents.  In December 2006, as a public service, Google launched the Google Patents beta site, initially with the indexing of the growing collection of U.S. patents and published applications.  The site capabilities have grown substantially. Google has worked closely with the USPTO, WIPO, and the EPO to acquire their data, and now covers the entire collection of granted patents and published patent applications from these patent offices. U.S. patents are available back to the very first ones issued in 1790, and EPO and WIPO (PCT) patent documents are available back to 1978.  Searches of these collections entirely within Google are now possible.  The company is also looking to expand the set of patent offices that it covers.

“It is striking just how much useful information is integrated in a single page in Google Patents.”

The following information may be obtained via searching on the Google Patents⁷ website (see also the “About Google Patents” webpage⁸ for further details):

• Simple searches by entry of the number of an issued patent or published patent application.
• Advanced searches using single or multiple criteria, including keywords/phrases, numbers, title, inventor(s), assignee, S. and/or international classification/subclassification, patent/application type (utility, design, or plant), and dates or date ranges of publication or issue.
• The “Prior Art Finder.” A remarkable tool that enables searching of more than just patent documents to identify relevant prior art references for comparison to an invention, or references that are relevant to a pending application or issued patent.  The Prior Art Finder “identifies key phrases from EPO, WIPO, and post-1976 US patent documents, combines them into a search query, and displays the results from Google Patents, Google Scholar, Google Books, and the rest of the web.⁸”
• PDFs of published patent applications and issued patents.
• Bulk downloads for those that need to search and/or monitor large collections of patent and/or trademark data. Among the patent data available from the patent bulk download page are patent and application assignment data, patent maintenance fee payment data, and patent application prosecution data from the Public PAIR (Patent Application Information Retrieval) website.  A collection of trademark registration, application, and assignment data are also available on the trademark bulk download page.

One Quick Example

It would take several columns to fully explore and report on all of Google Patents search capabilities.  For now, however, we present one simple example of the information that can be gleaned from a simple patent number search, i.e. our first bullet in the above list.

Our example patent to be searched is U.S. patent 6,292,218, for an “Electronic camera for initiating capture of still images while previewing motion images.”  We know that this patent has been litigated, and we are seeking some basic background information on it.  On the Google Patents search page⁷, we simply enter the patent number, and click the search button.  Not surprisingly, the top result is the Google page for that patent.  A series of additional patent results follows, which likely reference that patent as having been considered during examination.

We click on that first result, and are presented with Google’s data on the ‘218 patent.  What is striking is just how much information is available on that page, or available via a single click to access other pages. Near the top of the page, we can click on any one of several buttons to Find prior art, Discuss this patent, View PDF, or Download PDF.  The Abstract and a summary box of basic patent data are provided immediately below.  The thumbnail images of the patent drawings follow in a horizontal scrolling format, any one of which can be viewed with a click.

The Description and Claims are then presented in parallel columns, followed by a first list of patents and published applications considered during examination in the USPTO, and a second list of patents and published applications that were filed after the ‘218 patent and that reference it during prosecution.  A third listing of the  patent classifications then follows.

The page concludes with a very useful list: Legal Events.  The list is presented with the most recent events at the top.  Looking through the list from the bottom up, we see that the first and second maintenance fees were paid in 2005 and 2009.  The patent then underwent reexamination.  This was likely initiated by one of the defendants in litigation that was attempting to knock the patent out via reexamination in the USPTO, and was not successful.  The entry indicates that patentability of the reexamined claims was confirmed.

We then see that a security interest in the patent was assigned by Eastman Kodak to Citicorp in February of 2012; and the security interest was released and the third maintenance fee was paid in February of 2013.  Lastly, in March of 2013, ownership of the patent was transferred to Apple, Inc.  (This was likely the outcome of the sale of numerous Kodak patents in the bankruptcy proceeding.)  We do note one area of caution in our example. There was undoubtedly an assignment of the original patent application and the resulting ‘218 patent from the inventors (i.e., Kodak employees) to Kodak.  This assignment, for whatever reason, does not appear in the listing of our example.

Nonetheless, the amount of information that has been consolidated on one page is remarkable.  All of this information is available in the USPTO, but it would require navigating through up to about two dozen pages to obtain all of it.  Of course, if you are doing due diligence where you need to be 100% correct, any given fact should be double checked via a separate search. But as a first screening that can be done in minutes from one web page, Google Patents is an excellent tool.

We’ll Be Back

We are planning to take a closer look at some of the features in Google Patents in greater detail – that Prior Art Finder in particular is intriguing, and we want to learn more on how to use it effectively.  We will report on that in a future column.  In the meantime, the next time you need to do some patent research for any reason, you may want to give Google Patents a try.

1. See www.uspto.gov/patents/process/search/index.jsp, and follow links to other USPTO search pages from there.
2. http://www.uspto.gov/products/library/ptdl/services/step7.jsp.
3. See “The Limited Monopoly™” December 2011, and January 2012.
4. http://ep.espacenet.com/.
5. http://www.wipo.int/patentscope/en/.
6. See also “The Limited Monopoly™” January 2010, and June 2010.
7. http://www.google.com/?tbm=pts.
8. https://support.google.com/faqs/answer/2539193?hl=en&ref_topic=3368954.

PHOTO CREDIT: J.M. Hammond, Conesus Lake vista, “Searching for Spring.”

 Authors John M. Hammond P.E. (Patent Innovations, LLC www.patent-innovations.com) and Robert D. Gunderman P.E. (Patent Technologies, LLC www.patentechnologies.com) are both registered patent agents and licensed professional engineers.  They offer several courses that qualify for PDH credits.  More information can be found at www.patenteducation.com.  Copyright 2014 John Hammond and Robert Gunderman, Jr.

Note:  This short article is intended only to provide cursory background information, and is not intended to be legal advice.  No client relationship with the authors is in any way established by this article.

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