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, the team is 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 search report. You may choose to conduct one or more follow-on searches in preparation for writing your draft patent application in the spring.
First, use team funds to purchase the book, Pressman, "Patent It Yourself", Nolo Press, available in paperback on amazon.com or your favorite source. Get the latest version. If you purchase the PDF version, you can share among the team.
Second, consult "The Seven Step Strategy" and "How to Conduct a Preliminary U.S. Patent Search" in the Search for Patents section at the USPTO web site.
Third, determine your search strategy and conduct the search.
Fourth, Write the search report.
The report should follow the style outlined in Pressman. (But please don't invent names of attorneys or search firms or make it sound like you are a professional firm.) Read all of Chapter 6 (or whatever is the search chapter in the current edition.) Look at Fig 6A and Fig 6C and read the related commentary. 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:
- What on-line and off-line patent search resources you used. If you chose to restrict yourself to the USPTO on-line search engine, explain why this was a valid choice
- 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.
- 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 (if you don't know what these terms mean, read the Pressman book or look in the on-line patent resources). Then do a search by sub-class. 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 (Some may be in the UMN Library)
- Pressman, "Patent It Yourself", Nolo Press. (Excellent introduction to intellectual property, patents, patent searching and patent writing.)
- Hitchcock, "Patent Searching Made Easy", Nolo Press. (Good, tutorial information on how to conduct a patent search yourself)
- Stim, "Patent Pending in 24 Hours", Nolo Press. (How to write a provisional patent.)
- USPTO: Search for Patents (Highly recommended, see "The Seven Step Strategy")
- Google patent searching
- USPTO patent searching
- USPTO patent searching by patent number
- Pat2PDF and freepatentsonline for getting PDF versions of patents. (Google also can generate a PDF.)
- http://www.boliven.com is a site for conducting patent, trademark and other IP-related searches.
Assign a project manager for this task. Have the project manager search for relevant patent numbers using the strategies suggested above. Your search should turn up 100's of patent numbers. If you get less than 50 patents, broaden your search. To find very early patents, look at the "References Cited" section of key patents you find. Once the list of numbers have been generated, the manager divides the task of examining the patents among the team. 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 Super-Hot 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
- Your search report contains the names and numbers of the relevant patent Classes and Sub-Classes, and why they are relevant.
- Your report has evidence that you searched both by key word and by sub-class. Note that if you only use keyword search only, you will miss the 4 million patents prior to 1976 because full-text search of the patent database starts with 1976.
- You have not only listed relevant patents, but have also described why the patent is relevant and how it impacts on your proposed designThe report states your team's level of confidence in having found all relevant U.S. patents
Submitting the Assignment
Email (PDF format) to your company contact and to your faculty mentor. Upload (PDF) to the course Canvas site. Only one member of the team has to upload to Canvas.