Background

To obtain a valuable patent, you need more than just a great idea and a written description of it. You also need to ensure that what you are claiming is in fact new; that there are no prior patents or other “art” that are similar to, that overlap with, or that anticipate what is being claimed.

Finding prior art can be very difficult and expensive, often requiring countess hours to read through numerous Internet search “hits”, journal articles, and previous patents and patent applications. Yet submitting a patent with a poor prior art search can also be very costly.

For example, you may build a business based a submitted patent only to discover, when it is reviewed two to three years later, that the patent office has identified prior art that makes your idea un-patentable. A more painful example is when you have been granted a patent and attempt to assert it against a competitor only for them to find prior patents or articles that makes your patent unenforceable.

One of the best sources of prior art for many fields is the collection of United States patents freely available and searchable at the United States Patent and Trademark Office. This comprehensive database can be accessed by going to www.uspto.gov , selecting Search Patents and following the instructions available on the web site. A search may yield hundreds of patents (or applications) that match your search criteria.

Once a search is completed , to review the texts of the listed patents requires that you click on the hyperlink corresponding to each patent and then read through each page. To review the drawings for a particular patent, you must select “IMAGES” and click through the patent one page at a time on your browser (using a special tiff viewer available through the USPTO web site). Both of these processes are time-consuming and tedious – and sometimes, with large searches and/or long patents, a nearly impossible task.

The Telaric patent retriever/scanner software tool was developed to easily automate the retrieval of patents as both text and, when desired, images and provide a powerful tool to scan the text of patents to locate those most relevant to your invention. The retrieved digital patent documents can be stored, printed, or e-mailed.

The goal of this software is simplify the retrieval of patents and to substantially reduce the time spent reading patents that are not likely to be pertinent to your invention, allowing you to concentrate on the most relevant ones. The Telaric patent retriever/scanner is best used before a patent is applied for, but it also can be use to identify prior art to invalidate an issued patent. Obviously, it's always better to submit the best possible prior art list to reduce the review time by the patent office, create the presumption that your patent is valid over the prior art submitted, mitigate the chances that a patent application will be denied and reduce the chances that your patent will later be invalidated.

This tool can also provide an easy way for researchers and companies to keep abreast of new technologies disclosed in the form of new U.S. patents and applications.

The Telaric patent retriever/scanner assists patent attorneys and/or inventors make the time spent looking for prior art as productive as possible. The software reduces the time spent retrieving patents from the USPTO, allows you to concentrate your reading on those patents most likely to help you develop a clear understanding of what you can claim and minimize the wasted time spent reviewing unrelated patents.

Overview

The Telaric patent retriever/scanner simplifies the process of retrieving patents and scanning them to determine if they are related to a new invention or your new product line. This tool works with patents that have been issued by the United States Patent and Trademark Office (USPTO) and published pending patent applications.

The USPTO web site (http://www.uspto.org) has a Boolean (and/or) search capability to assist users to locate patents. However, after locating patents that match your search criteria you're on your own. The Telaric patent retriever/scanner was designed to provide an automated tool to take you beyond what the USPTO web site provides by:

1. Downloading patents to your computer in both text and image formats
2. Scanning the downloaded patents to help determine which are of particular importance
3. Automating the retrieval of additional patents related to the most relevant patents found

This Rationale for Use Guide describes the capabilities of the Telaric patent retriever/scanner showing you how to retrieve patents in both a searchable text format (Microsoft Word format) and a browser image format that includes drawings and any errata notices (suitable for printing or storing in the Adobe PDF format). This Guide will also show you how to scan through retrieved patents to quickly determine which are most likely to be relevant to your invention, saving you hours of time spent reading the wrong patents and possibly missing the ones that have the greatest importance to your prior art search.

Patent Retrieval

The Telaric patent retriever/scanner automates the retrieval of patents and patent applications. The software is in a Microsoft Word template that you install on your computer. For each new patent review, open the template to make a new blank document with the tools installed. Then enter the patent and/or patent application numbers as text and click the “Retrieve Patents” button to start the patent retrieval.

To determine which patents to retrieve, one of the best ways is to use the USPTO’s web site (www.uspto.gov) and select the “Search” hyperlink under “Patents”. You can choose to search using single or multiple words, categories, and logical operators. In either case the USPTO returns a list of patents that match the criteria submitted (see Fig. 1 below). This list can range from a few patents to many thousands. When the returned list is too large, tighten the criteria to be more specific.

The next step is to copy the returned list (using a mouse to select it) and paste it into the Word document. In some cases several pages of results may have to be copied to get the complete list. At this point, patents whose titles seem unrelated to your invention can be deleted from the list. Alternatively, you can place a letter (e.g. “X”) immediately in front of the patent number (no spaces between the character and number) to prevent that patent from being retrieved (see second patent in Fig. 1). When you’ve decided on the patents that are likely to be relevant, they can be retrieved by clicking the “Retrieve Patents” button in the toolbar.

Fig. 1

The software allows you to select if you want to retrieve the patents in one large searchable file or as individual files. The advantage of the single file choice is that it can be scanned and searched (see below) as an ensemble. Using the individual file choice will provide you with files that can be scanned and searched, but only one at a time. When the number of patents is quite large, the single file choice is often preferred as it can be used to more quickly help you identify the patents of greatest importance.

The software also allows you to select if you want to retrieve the text only or the text and the drawings of the patents. When dealing with a large number of potential patents, it may be best to initially retrieve the text only and to retrieve the patent with drawings (this takes longer) only after you have a better idea of those patents likely to be of greatest relevance.

Once the retrieve function is started, it locates, in the Word document, every 7 digit patent number (with or without commas) and 11 digit patent application number (no commas). Once a number is found, the USPTO web site is contacted to get the text of the patent, which is imported into the document and reformatted from the claim section to the end as two columns of 9 point text. The retrieval time depends on the total page count, the activity of the USPTO’s web site, your Internet connection speed, and your computer’s processor speed and available memory.

Note that patents prior to January 1976 (patent numbers 3,930,270 and lower) are not available in text format. Also, to retrieve patents below 1,000,000 (1911 and earlier) a leading 0 must be placed to make it 7 digits long.

If the drawings are to be retrieved, a new Internet Explorer window is opened and the entire patent is downloaded as multiple .tiff images (the correct viewer can be located at the USPTO web site, and must be installed prior to downloading your first patent in image format). Care should be taken to avoid downloading too many patents as images at one time since some versions of Windows limit the number of Internet Explorer windows that can be simultaneously opened (25-30). Once each patent’s tiff images are retrieved, they can be printed directly from your computer or converted into a PDF file format for storage (this requires a PDF writer).

Patent Scanning

Having retrieved one or more patents, they can now be scanned by the Telaric patent retriever/scanner by clicking the “Scan Patent Text” button on the toolbar. Once this button is selected, you are presented with a form to enter words or phases that you want to search for in the patents. Note that the software makes it possible to enter the root of a word and deselect the “Find Whole Word or Phrase Only” button. This allows you to enter the text “verif” to search for “verify”, “verification”, “verifies”, “verifying” and “verified”.

Besides entering the text to search for, you can also select highlight and font colors and font size to distinguish the search text every time it is found in the patent. In some cases it is useful to give every search word or phrase a different color. In other cases it may be useful to give all words or phrases with a similar importance or meaning the same color, e.g. “motor”, “engine”, and “powerplant”.

The Telaric patent retriever/scanner also allows you to specify word pairs that must appear within a few words of one another. This allows you to search for words that, in some patents, may be close to each other but not adjacent. For example, instead of looking for the common word “motor” and getting hundreds of matches, you could search only for “motor” when it appear within 15 words (the maximum is 100 words) of “hydraulic”. This approach will find text like “motors using electricity or hydraulics”. Any paired words that are found are connected by a colored underline between the words.

When you have entered all the words or phrases for which you want to scan, click the “Start Search” button. The software then searches the selected patent (or all the patents when they are retrieved as one file) for every word or phrase entered and, when found, reformats the word or phrase using the selected highlight and font colors, and font size. Searching continues to the end of the document and resumes with the next word or phrase in the entered list.

When the search is completed, a table is inserted in the Word document (see Fig. 2) identifying the words or phrases entered, listing the number of occurrences of each word or phrase in the document, and showing the formatting selections made to distinguish each word or phrase. A similar interactive table is displayed allowing any of the words or phrases to be selected (by selecting its button), which then guides you through the document to each occurrence of the selected word or phrase. The text near the word or phrase can be read to determine if it is used in a manner that has relevance to the user, e.g. the word “flag” may appear in a patent about cloth flags as well in patents about computer software. When the usage is relevant, the patent number of that patent can be added to a list of important patents. For convenience the patent number appears at the top of every page.

Fig. 2

Note, when a new scan is started, the table of previously scanned words is deleted and the text highlighting and font changes are removed. A copy of the document should be saved with a different file name if these items are to be preserved.

In some cases it may be easier to visually scan thru the patent to find which search words appear (by distinctive highlighting color, font color, and font size) and use the visual clues to quickly understand the relevance of a patent. For example, you could use the Microsoft Word zoom or scaling feature to reduce the size of the document on the screen so that several pages can be displayed at one time. Doing this would allow you to quickly identify patents without any highlighted text and thus no matching search words.

Retrieving Patents After Scanning

Patent numbers of high relevance patents can be copied and entered into another Word template document that could be used to retrieve both the text and the images for a more detailed review.

Frequently these patents will have a list of prior art specifying additional patents that may be useful to read (see Fig. 3). One way to retrieve these referenced patents is to activate the “Retrieve Patent” button on the toolbar when viewing a patent (Note: the patent number of the “seed” patent should be modified, e.g. by placing a “X” immediately before it, to prevent this patent from being retrieved again). Every patent number (7 digits with or without commas) will be used to retrieve patents whether the patent number is in a table of prior art or directly in the text of the patent, e.g. for example a list of continuations or a discussion of prior art. For this reason it is sometimes desirable to copy the prior art list of a patent into a new Word template document (see Fig. 3) so duplicate retrieving isn’t done.

Fig. 3

A high relevance patent may also have a number of interesting patents that reference it, which are available by selecting the “Reference By” hyperlink above the list of prior art (see Fig. 3). This will return a new list patents that can be copied and inserted into Word template document for the software to retrieve. A relevant patent will also include one or more classification codes that are used to associate common patents together. The classification numbers can be used as part of a USPTO web site search along with other criteria to uncover additional patents for review.

Conclusion

A patent is only valuable if what you are claiming is truly novel, which can only be ensured by a thorough search of the prior art. This prior art searching is time consuming and tedious.

The Telaric patent retriever/scanner was developed to reduce the time spent retrieving patents from the USPTO and allow you to focus your efforts on those patents that are most relevant to your search.