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Patent Searching 102: Using Public PAIR

By Gene Quinn on August 21, 2010

Doing your own patent search early in the invention process is good for a few reasons. First, if you can find prior art that is too close to what you want to do then you save time, money and energy, provided of course you move on and not try and pound that round peg into a square hole! Patent searches are also critical because they will give you a lot of ideas if you actually read the patents and not just the title and abstract and check out the pictures.  If you read the text a whole host of ideas are likely to come running into your head.  Finally, a patent search will give you a sense of what else is available that might be public domain already and a substitute for your invention in the eyes of the consuming public.

Some time ago I wrote Patent Searching 101, which is a do it yourself guide to conducting a patent search, which I think is a good tutorial as far as it goes, but it is time to take the next step and provide an advanced tip. If you are really serious about doing a high quality patent search on your own I recommend doing whatever you can to find 1 or 2 patents or patent applications that closely relate to your invention, whether that means in terms of structure or concept. I hear all the time that inventors do searches and cannot find anything relevant, which is unbelievable. If you do a search and find nothing then you are doing something wrong. See No Prior Art for my Invention.  Do whatever you have to, and in a pinch to find something quick that is at least somewhat relevant Google Patent Search will do. Then visit Public PAIR and see what you can find out about the prior art found used by the patent examiner against that patent or patent application.

For example, take a look at US Patent No. 7,627,908. I picked this because it is a fairly easy invention to comprehend and is really technology neutral, which makes it a good teaching tool.  Visit Public PAIR and navigate through to the ‘908 patent and then click on “Image File Wrapper.” What you will see is represented in the screenshot below.

Look at all the information that is publicly available through Public PAIR.  Let’s start with my favorite, the Non-Final Rejection (see blue arrow).  In truth, any rejection that you can find is a source of great information.  When you find a rejection issued in a patent or patent application that is closely related in terms of structure or concept you will learn what the prior art is that the patent examiner thought relevant enough to use against the application.  If you iteratively go through this process, looking up the references cited by the patent examiner, you can typically start to see patterns develop, with certain references being used with at least some frequency in similar patent applications.

The next best thing, in my opinion, is stumbling across something characterized as “search information including classification,” (see red arrow).  Definitely open this file.  What you will find is a document titled “search notes.”  This document will list the classifications searched, which is gold!  As I explained in Patent Searching 101, finding the relevant classifications and subclasses is essential to a competent search, and while this listing will likely be over inclusive it still will substantially narrow down your efforts and focus you on where you will most likely find the most highly relevant prior art.  For example, in this case the table below, taken from the the search notes document relating to the ‘908 patent, gives great clues where you should be looking.

You can also typically find a list of references cited by the examiner (see yellow arrow), which will give you a list of patent references that you should take a look at.  You might be able to dismiss them relatively quickly, and these lists are not as helpful sometimes as the prior art actually used, but if you want to get a good feel for what the art is that the patent examiner is likely to find you want to take a look at these lists.

Not shown here, but sometimes helpful, is an Information Disclosure Statement or an IDS.  In fact, there can be many Information Disclosure Statements filed during the life of a patent application.  This is the patent applicant telling the patent examiner of prior art they know about and believe to be material to one extent or another.  Again, not likely as helpful as a Non-Final Rejection or Final Rejection, but worth looking at if you find it in the Image File Wrapper.

The patent process can be an expensive process.  You absolutely want to find whatever prior art you can on your own early in the process.  By finding prior art on your own you save money and might save yourself a good deal of time by not pursuing a path that seems fruitless.  As things progress you should have a professional patent search done with a patent attorney or patent agent giving you at least an opinion on patentability, and hopefully a detailed assessment explaining the likelihood of obtaining a patent and what can realistically be expected to be achieved.  But for starters, as you are doing your do diligence you absolutely should look and find whatever you can.

The Author

Gene Quinn

Gene Quinn Gene Quinn is a patent attorney and the founder of IPWatchdog.com. He is also a principal lecturer in the PLI Patent Bar Review Course and an attorney with Widerman & Malek.

Gene’s particular specialty as a patent attorney is in the area of strategic patent consulting, patent application drafting and patent prosecution. He has worked with independent inventors and start-up businesses in a variety of different technology fields, but specializes in software, systems and electronics.

is admitted to practice law in New Hampshire, is a Registered Patent Attorney licensed to practice before the United States Patent Office and is also admitted to practice before the United States Court of Appeals for the Federal Circuit.

Gene is a graduate of Franklin Pierce Law Center and holds both a J.D. and an LL.M. Prior to law school he graduated from Rutgers University with a B.S. in Electrical Engineering.

You can contact Gene via e-mail.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

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There are currently 1 Comment comments.

  1. Mark Nowotarski August 23, 2010 5:04 pm

    Lately I’ve been gaining a greater appreciation for the value of class/subclass searching. This is a great way to search very early patents (e.g. 19th century) which can be quite important for mechanical inventions (e.g. sports equipment, consumer packaging, etc.)