The Patent Search

1. The Patent Search Critical first step in profiting from your innovation. Or: Conducting the best possible patent searches for minimal cost. • Ron Simmer, PATSCAN • Service of PATEX Research and Consulting ltd • www. patscan.com • ron@patex.ca

2. PATSCAN was established in 1986 at the University of BC to assist the technology transfer process through access to patents Since UBC terminated their patent services in 2003, the PATSCAN Trademark was purchased by Patex Research and Consulting ltd. operated and owned by Ron Simmer PATSCAN provides professional patent and trademark research services to the private sector in Canada and the USA ron@patex.ca

3. Why do your own patent searching? • Amazing competitive intelligence opportunities found in patent data. • Besides the information you know you don’t know there is always the information you don’t know you don’t know! • Aside from free Internet databases there are modestly priced but powerful patent database subscription services.

4. Free Internet Intellectual Property Databases: • What are they good for? • Sampling data, answers to easy questions, • state of the art searches. • Verifying results from other databases. • Free patent copies. • What are their limits? • Assignee and status info unreliable. • Slow and ineffective search tools. • Poor titles, abstracts, indexing. • How reliable is the data? • May be incomplete, dated and inaccurate.

5. Best Free Internet Sites for Patent Searching • Espacnet – 30 million docs, many in PDF • Depatis.net International coverage in English • USPTO Site - full text searchable • SurfIP (IPOS) Asian dbases from Singapore • WIPO database of PCT applications • CIPO site on Strategis for Canadian patents

6. How to Do a Patentability Search • Think Functionality: How does it work? • Write the claims for your invention. • Find all the relevant patent classifications related to each claim. • Search for patents anticipating your invention as a whole. • Search for patents that combined would anticipate your invention.

7. Robert Kearns “Pause Wiper”

9. 213 patents found in 318/444 17,019,275Moisture sensor and windshield fog detector 27,009,356Wipercontrol apparatus and method for automatic vehicular wiping 36,958,585Windshield wiper system activated by sensing rainwater 46,946,639Moisture sensor and windshield fog detector 5.6,944,906Direct drive windshield wiper assembly 66,940,244Wiper control apparatus and wiper control method 76,936,985Sensing device for determining a rain rate 86,917,173 Automobile wiper driving apparatus 96,911,796Power control device 106,867,559Wiper arrangement for motor vehicles, especially for car windscreens 116,853,897Windshield fog detector 126,802,205 Moisture detection system and method of use thereof 136,801,006Control device and method for operating a window wiper apparatus with operating-point-dependent

10. Patent Classification – The Classical Tools are Free! International Patent Classification • Application Oriented - Wide use European Classification (ECLA) valuable extension of IPC US Patent Office Classification • Continuous updates with finer detail than IPC - • Function Oriented

11. Comparing 3 Classifications • USPTO 318/444 MOTIVE POWER – Periodic control of motors. • IPC B60S 1/08 CLEANING VEHICLES Windshields – Wipers – Electrical • ECLA (European) B60S 1/02B2 VEHICLE CLEANING – Windscreens – Demisting – Electrical Means.

12. Keywords vs Classification • Keyword searches alone will find probably only 10% of important patents. • A thorough patent search will consist of dozens of search strategies involving class/keyword and class/class searches.

13. Search Strategy Steps. • 1.Do keyword search to find sample patents. • 2. Sort best classifications used by sample patents. • 3. Refine search using “shotgun” • eg. 340/* and “pet” • 4. Crawl best classifications found.

14. Examples of Search Strategiesre: Artificial Knee Joint Brake • USPTO ccl/188/$ and ccl/623/4$ • ccl/623/4$ and abst/(brake or retarder) • ESPACENET (IPC) A61F2/64 and A61F2/74 • ESPACENET (Both ECLA and IPC) • A61F2/64 and F16F9 (see Ch6, Competitive intel lab….)

15. Hints for Patent Searching • On finding relevant patents, check all classifications (USPTO ECLA IPC) • Check all cited and citing patents for relevant patents found. • On finding relevant patents, check patents by the same inventor or company.

16. The Usual Big Vendors Dialog STN (Chem Abs.) Questel-Orbit Lexis Nexis Derwent Second Tier Database Providers Delphion Micropatent Patent Cafe PatBase Commercial Sources of Patent Data

17. Patent Data Issues - inconsistent language, spelling, classification Quality How good is title and abstract information? Eg Derwent has enhanced titles and abstracts. Reliability Error checking by Vendor? Missing data? Classification revisions? Currency How Frequent and thorough are updates?

18. Subscription Patent Databases What is the range of costs for patent searching? From US$95 a month (Delphion) to hundreds of dollars an hour (Derwent, Chem. Abs.) How is the data better? The assignee, patent family and status data is more likely to be current. When do they need to be used? • When critical questions need answering.

19. The Value Tradeoffs • Time is Money $$$$$$$$$ Subscription databases have tools to greatly speed up search process -Proximity word searching -Snapshots on Delphion -Keyword in Context on Lexis Nexis Several vendors offer flat monthly rates for unlimited use

20. The Value Triage Exercise • Use free databases for quick answers and to verify results from other sources. 2. Use mid-range fixed subscription databases. for general high volume searching. 3. For critical project verify and check results on best possible sources and bear the costs.

21. Patent Family Query Comparison • INPADOC philosophy includes all patents related to a common priority filing date. ($) • Derwent practice is more inclusive, pulling in more related patents.($$$$) • Assignee data by country. • Both systems victims of national patent office data distribution. • CIPO a problem. Significant missing CA docs

22. Patent status query comparison INPADOC database provides reliable status data for only 42 of 69 jurisdictions • Little Canadian status included. Derwent patent status not reliable IFI and Lexis Nexis provide excellent USPTO legal status data. CIPO status service poor.

23. A Competitive Intelligence Example using IP Perform a 10 minute CI search on a product known as “The Club” to find: 1. Who owns it? 2. How many US patents cover it? 3. Any Canadian counterpart patents? 4. How aggressive are they in defending their IP?

24. “The Club” May be a Registered Trademark • Search it on the best available trademark database on the Internet • Access to Canadian marks offered by CIPO on Strategis • In theory the Company owning the Trademark will own the patent

36. Some Patent Search URLS Patent Info Users Group www.piug.org/ Mayall’s IP Links www.mayallj.freeserve.co.uk/ British Library: www.bl.uk/collections/patents/search.html PATSCAN www.patscan.com

37. Marketing, Marketing,Marketing • Less than 10% of patents are every commercialized. • One patent in a hundred makes serious money. • Biggest reason for new product failure is inadequate market analysis.

38. Product Life Cycles

39. Why Products Fail

40. 10 commandments for successful inventors • 1.Invent what you know. • 2. File lots of patents. • 3. Kill turkeys early. • 4. Be prepared to sell out. • 5. Get it in writing.

41. 10 Commandments Cont’d • 6. Beware the invention marketers. • 7. Listen to criticism. • 8.Search patents early and often. • 9. Do what you do well and hire pros for the rest. • 10. Communicate, Communicate….