dolution

WHY: The purpose of this assignment is to conduct a patent search and produce a patent report

WHAT: The U.S. Patent literature is an invaluable resource for ideas and also the place to go to determine if your concept is unique and patentable. Although comprehensive searches are best done by professionals, students are fully capable of doing a capable and competent job searching the patent literature. For this deliverable, you will conduct a comprehensive search and produce a professional search report.

Your report should start with the product description and the search objective. Search objectives might include to (1) determine patentability, (2) investigate related prior art, (3) get product ideas, or (4) see how existing products work.

Describe how you conducted the search and the limitations of your search. This should include:

1. What online and offline patent search resources you used. If you chose to restrict yourself to the USPTO online search engine, explain why this was a valid choice

2. The keywords, class and subclasses you searched (provide numbers and names) and why. State the total number of U.S. patents in each relevant subclass.

3. Your level of confidence in having found or not found all relevant patents.

The report should then detail the results of your search. Organize the results into patents that are (1) most relevant, (2) somewhat relevant, (3) interesting but not relevant.

For each patent include the inventor, assignee (company), patent number, filing date, issue date, title and a one or two sentence description. This can be in table form.

In addition, patents in category 1 require a detailed description and a thorough analysis of how it is relevant. The appendix to your report should have copies of the front pages of any patent mentioned in your search results, and full copies of any patents that are in category 1 (unless the patent is very long). Your list of relevant patents should describe the patent and its relevance to the project in your own words. Straight copying of text from the patent itself isn’t particularly useful because the legal language of patents is often difficult to understand. In particular, point out the one or two patents the client should pay particular attention to and why.

Important: Use a keyword search to find relevant classes and subclasses. Then do a search by subclass. One of the better ways to find the relevant set of subclasses is to find patents close to your product and note (1) the class and subclass of the patent (listed in the “U.S. Class” field on the front page of the patent), (2) The classes and subclasses listed in the “Field of Search” heading which tells where the patent examiner searched for competing patents, and (3) the classes and subclasses for the patents listed in the “References cited” section on the front page of the patent. If you only search by keywords, you are likely to miss the most important patents.

Resources:

1. Pressman, “Patent It Yourself”, Nolo Press. (Excellent introduction to intellectual property, patents, patent searching and patent writing.)

2. Hitchcock, “Patent Searching Made Easy”, Nolo Press. (Good, tutorial information on how to conduct a patent search yourself)

3. Stim, “Patent Pending in 24 Hours”, Nolo Press. (How to write a provisional patent.)

4. USPTO: how to search resources

5. Google patent searching

6. USPTO patent searching

7. USPTO patent searching by patent number

8. Pat2PDF and freepatentsonline for getting PDF versions of patents. (Google also can generate a PDF.)

9. http://www.boliven.com is a site for conducting patent, trademark and other related

searches.

Suggested strategy:

Your search should turn up 100’s of patent numbers. If you get less than 20 patents, broaden your search. To find very early patents, look at the “References Cited” section of key patents you find.

Now the hard work begins. The task is to sort your patents into Hot, Medium, or Cold where Hot are those patents most closely related to your project. Bring up each patent on the USPTO web site and do a quick scan in an attempt to categorize. Write a one-line annotation that describes the patent. For patents in the Hot and Medium categories, print off the front page to include in the appendix of the report (or save in TIFF or PDF format for inclusion in an electronic

version of the report). For patents in the Hot category, read the entire patent including the claims and write a more detailed analysis of the patent for the report. If you find a SuperHot

patent, include the entire patent in the appendix of the report. (If the patent is longer than 20 pages, print the front matter, the most relevant drawings, and the claims).

Checklist for your report

1. Your search report contains the names and numbers of the relevant patent Classes and SubClasses, and why they are relevant.

2. Your report has evidence that you searched both by key word and by subclass. Note that if you only use keyword search only, you will miss the 4 million patents prior to 1976 because fulltext search of the patent database starts with 1976.

3. You have not only listed relevant patents, but have also described why the patent is relevant and how it impacts on your proposed design. The report states your team’s level of confidence in having found all relevant U.S. patents