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Copyright (c) 2006 Jan O. Kechel
Permission is granted to copy, distribute and/or modify this document under the terms of the GNU Free
Documentation License, Version 1.2 or any later version published by the Free Software Foundation;
with no Invariant Sections, no Front-Cover Texts, and no Back-Cover Texts.
A link to the license is included at the end of this document.

Contents

Goal

This HowTo is a step-by-step guide on how you could perform a coordinated search for Prior Art in the Internet.

Patents contain several claims. You have to invalidate each Claim on its own! Just invalidating Claim 1 does not invalidate Claim 2 (but it might still help you there).

We also verified this HowTo ourself with examples on real patents. If you are not sure how some step could be achieved then take a look at our Example Prior Art search

HowTo

Schecter IBM 03/15/2006 (cited): 

I suggest the focus be on finding the closest prior art,
including each and every feature of a claim,
preferably in a single reference.

Basic Steps Before You Start

Identify the patent priority

Each patent has a Priority-Date. This is the day at which the patent was first applied. Only Publications prior to this date can be used against this patent. (One year prior to the filing date is much better.) So first step will always be identifying this date. The Priority-Date can be found on each Patent-Publication. How to Read a Patent

Try to understand the patent - point out the novelty

This (obvious) step is most easily done by summarizing the first patent claim with your own words. To make it even easier your can:

Try to find out which kinds of systems might use similar methods

Create a list

..with all Programs/Projects that might use similar methods

This actually needs knowledge about the specific programs. You might just try some of the programs (if freely available) to check if they can do what you are looking for. FAQs, Docs or Manuals are also helpful here.

Verify selected Projects

Now, that you have a short list of Projects (maybe only one), we need to:

Verify that the implementation / description is older than the Priority-Date

Verify that it really implemented or described the patent

.. or parts of it, everything is good here!

Don't forget to ..

While doing the above you might find other projects on which this project is based upon.

Verify if one of those (even older) Projects already implemented the patented method. If that is the case add it to your list. This is a very normal step, e.g. if you are looking for some graphical methods, you might start with Gimp, and then see that ImageMagick is a program that is havily used by Gimp. Don't forget to checkout ImageMagic as well.

What to do with a specific file that shall be used as Prior Art

If you identified a specific version of a program that holds the Priority-Date and contains parts of the patented method you still need to proof that this file was already publicly accessible at that date:

Tools to aid your search

Patent Searching

If you are looking for a patent, or want to find a patent that might be used as Prior Art, then you have a good chance here.

Free

Fee Based

Anyway, if you are looking for any Prior Art, then above tools will help you much more. Taking into account that only google itself returns for the letter 'a' 20.470.000.000 results, then the 150 million pages from espacenet and the 240 million pages from the USPTO look like a drop in the ocean.

You might say that USPTO has selected documents and the internet has lots of shit, well, then just say only every 10th internet-page contains some real information, then there are still more then five times as many good documents you can search with google compared to patent search engines (20.470.000.000 / 10 / (150.000.000 + 240.000.000) > 5).

What's next?

Well, if you found some Prior Art, the following options can be considered:

  1. ask the owner to void the patent himself
  2. ignore the patent and all license fees, if your Prior Art is good, then you don't need to fear beeing sued
  3. try to void the patent by force - sue the owner
  1. send your Prior Art to the inventor, then he has to pass this knowledge on to the USPTO, resulting in a lesser chance that the patent will be granted (for submissions to IBM you can use this form).
  1. don't file it

Weblinks

fun facts

The Patent-Office claims to do all of this for less then 1,000 US$. Assuming that this takes in average about 2 weeks, which are like 60 hours of work, their examiners work for less than 16$ per hour ;-) Kechel 08:54, 14 March 2006 (PST)

changelog

31-MAR-2006

19-MAR-2006

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