Patent drafting task # 4: patent searching [archived, obsolete as of 2022]

Note (3/11/23) – this step is still valid. Links seem to work; please alert me to any problems or questions.

Brainstorm! Come up with terms that are potentially relevant to your client’s invention. Our main task here, however, is not to do keyword searching, but to use your terms to find relevant CPC (Cooperative Patent Classification) classes. CPC is a modern patent classification system used internationally, as opposed to the older USPC (U.S. Patent Classification) system. Both are still useful for searching, but we will only use CPC in this project.

Illustration: For example, suppose I invented a DO-IT-YOURSELF customizable electric guitar. The guitar is easily disassembled and reassembled on the fly, allowing me to quickly swap out parts and create different sounding and looking instruments. Before filing a patent application, I need to search other relevant guitar and electric guitar patents. Potentially good terms would be “electric guitar,” “guitar,” and “musical instruments.”

Note (3/11/23) – this step is still valid. Links seem to work; please alert me to any problems or questions.

Start off with the USPTO homepage. Use the search box in the upper right and search CPC scheme _____, where the blank space is a search term relevant to your client’s invention.

Illustration: Using the upper-right hand search box, I entered “CPC scheme guitar,” from which I found G10D and G10H to be of potential interest. These are main CPC classes.

Another way of finding potentially useful main CPC classes is by going to WIPO and clicking on “Catchwords.”

Illustration: The term “guitar” (in the range between GRENADES – GYROSCOPES) came up with nothing, so I tried the more general term “musical instruments” (between MUSEUMS – MYOGRAPHS). There I saw the same two solid possibilities: G10H for electrophonic musical instruments, and G10D for other musical instruments.

But finding the main CPC classes is only a start. Then I moved on to the next step.

Note (3/11/23) – this step is still valid. Links seem to work; please alert me to any problems or questions.

Next, go to the CPC listings at either the USPTO or WIPO websites to find relevant CPC classes/subclasses/groups/subgroups.

It’s probably better for you to use the USPTO than WIPO, though I encourage you to try both.

For USPTO: Enter the CPC scheme you found in step 2. First, it’s easy to expand the USPTO listings. Up top of this USPTO page, there are buttons to expand or collapse listings. Second, the USPTO listings seem go into more detail than WIPO, which might help you to narrow your searching more quickly. Once you expand the CPC listings, you can use your browser’s find function (typically CTRL + F on Windows browsers; I don’t use Mac but try Command+F in Safari).

Illustration: Using the USPTO, I entered G10H. This took me here (click to see). I expanded the listings and looked through them. I also did a CTRL+F and found two subclasses for guitars, concluding that G10H 3/18 was of particular interest to me (“Instruments in which the tones are generated by electromechanical means . . . using a string, e.g. electric guitar”).

For WIPO: Click on the WIPO link. Wait for the page to load (it can take a minute). Then click on the letter for your scheme, and keep expanding till you reach your CPC code. Click on that code to enter the page. Alternatively, type your main CPC class into the search box in the upper-left and click the search icon. Scroll to the bottom of the page so the page opens entirely. Then read through the page (and use your browser’s find function) to find relevant subclasses.

Illustration: Using WIPO, I entered G10H into the search box. This took me here. I expanded the listings and looked for guitars, eventually concluding (again) that G10H 3/18 seemed very relevant.

Then I moved on to the next step.

Note (3/11/23) – steps 4 through 6 will need to be modified because the old PatFT and AppFT tools are no longer available. This has also broken the links given below. Hopefully I can update the links using the new tool. In the meantime, I will add (in red) links and search parameters that you can use in the meantime. We will learn the new unified patent/application search tool — found at THIS LINK — together. 

The goal here is to use your CPC subclasses to find potentially relevant issued patents.

Here you are searching the issued patents database (PatFT). Select advanced patent search (left-hand column). Be sure to change the box to search from 1790 to present and not just 1976 to present. [Note (3/11/23): ignore PatFT link, go to Patent Public Search | USPTO. The option to limit searches to just post 1976 appears to be gone and the tool now appears to default to searching all files in the database.]

Use the CPC code to search. When searching, you’ll have to eliminate the space in the CPC code.

Illustration: I did an advanced PatFT search for cpc/G10H3/18 (click to see) and found many hundreds of hits. Way too many for me to look at. (You can click the links to see how I did my search.) [Note (3/11/23): the link no longer works; instead go to Patent Public Search | USPTO, and type G10H3/18.cpc. (including the periods) into the Search field and hit “search” button].  

But now keywords might be useful as a way to narrow down a bit. So I added a further search parameter: “guitar” in the specification, searching: cpc/G10H3/18 and spec/guitar (click to see) . Fewer but still too many for this project. [Note (3/11/23): again, reminder, these links are obsolete. Instead, type G10H3/18.cpc. AND guitar.spec. (including the periods) into the Search field and hit “search” button. Also note that you can search other fields. Click the HELP tab (lower left) to see parameters to search.]

 Now I tried cpc/G10H3/18 and spec/”electric guitar” (click to see) (note the use of quotes for the phrase). Still a lot, right? [Note (3/11/23): Search G10H3/18.cpc. AND (“electric guitar”).spec.]

Let’s try limiting by abstract rather than specification: cpc/G10H3/18 and abst/”electric guitar” (click to see). Now the number is reduced, maybe more manageable (though a few years ago it was 34 hits and is now over 60 as of 2023). [Note (3/11/23): Search G10H3/18.cpc. AND (“electric guitar”).ab. Note that the second field to search is now AB. rather than ABST.]

Tip 1: As noted above, start with a CPC subclass, and if needed, narrow by adding keywords (ABST or SPEC are good places to use keyword limiting). If you were doing real-world patent searching, this might eliminate potentially relevant hits. But for this project, I am more interested in you learning the basics of what you’re doing.

Tip 2: If you do what I suggest above and there there are still a huge number of hits still, then use a rule of reason. This exercise is not a true patent search and I don’t expect you to do exhaustive searching. It’s a learning exercise. So if you’ve reasonably culled down the hits through CPC class + keywords, and there are still numerous hits, then look through a reasonable number of them and then stop.

[Note (3/11/23): Use the “Document Viewer” on the right. You can view cover sheets and full patents. To switch between text cover sheet and PDF cover sheet, click on the upper-left button on right that looks like a camera/T. You can use the FILE SAVE button to download the patents and applications that may be pertinent. Note that for applications, be careful that you check to see if the proceeded to actual issue.]

FIRST

What you need to do is look at the cover page for the narrowed-down patents you’ve found. (Again, look through a reasonable number, not every single one: I recognize you have lives!!).

At first, look only at the cover page, particularly the abstract and the drawing. If a hit seems relevant, then download the FULL PDF and save it for later.

SECOND

After culling your issued patents (to just a few of the most pertinent), read those patents carefully to determine whether they may be relevant to the patentability of your client’s invention. Do they potentially render your client’s invention non-novel or obvious?

If so, you will later try to “design around” the prior art. That means you will draft your client’s claims sufficiently different from the prior art that they are novel and non-obvious.

Illustration: In reviewing the issued patents, I saw at least one hit that seemed highly pertinent to my hypothetical invention. See U.S. patent no. 9,466,269 (click to see), issued patent for “Electric guitar system for quick changes.” [Note (3/11/23): this link won’t work; instead, figure out how to get the document using the Basic Public Search.] The abstract says:

An instant access guitar system allowing easy access to cavities in the body portion of the electric guitar. The cavities are covered by plates, a pick guard, flexible laminates or other suitable cover materials. The covers are held in place by magnets that magnetically attach to magnetic material mounted in the guitar body. The appearance of the guitar may be changed by changing the pick guard and the decorative laminate on the headstock. The sound of the guitar may be changed by having unique pickups and wiring releases pre-built in multiple configurations on multiple pick guards as modules to change in and out of the guitar at will with no tools or solder.

This looks like a patent I’ll have to consider carefully in determining the patentability of my hypothetical invention. This patent would also be relevant to me even if I don’t try to patent anything, because if I start to make and sell my guitars, they might infringe! So patent searching can be important not just to getting your own patents, but in avoiding infringing the patents of others!

The goal here is to do the same things you did in # 4 and 5 but do it with the application database (AppFT). Thus, the goals become finding potentially pertinent applications (# 4) and selecting actually pertinent applications (# 5).

The application database (AppFT, right hand column, advanced search) also contains prior art. It provides access to published U.S. applications. These applications may have already issued to patent, or been abandoned, or are still pending. The database only goes back to 2001, when the USPTO started publishing most applications after they have been pending 18 months.

You’ll do the same thing you did above in # 4 and # 5, but for applications.

Illustration: For instance, I tried a number of searches, including cpc/G10H3/18 and abst/”electric guitar” (click to see). One potential pertinent hit was for a guitar with a cavity to change pickups easily. See U.S. Application No. 15/113,069 (click to see) for “Lightweight electric guitar.”

Use general search tools (such as Google), as well as sites like eBay and Amazon.

Do not search foreign patents at all because that will make the project too unwieldy. Also, do not bother using the old USPC (U.S. Patent Classification). USPC is still useful for older patents, but again, I want to keep your project manageable.

Finally, for obvious reasons, you cannot hire a search professional to do the work for you! You may, of course, seek guidance and assistance from me and your current T-Cubed Innovations class colleagues!

Illustration — using such tools, I found: 

• Google: article on a guitar with interchangeable parts (click to see). 
• eBay: 1970 guitar with interchangeable pickups (click to see).
• Amazon: no luck (and nothing to see here)