Tag: patent search

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Convinced by Patent Pending or Will They Search Before Licensing Your Invention?

When you approach a potential purchaser or licensee of your invention, the potential purchaser or licensee might do their own research to determine whether they think you are likely to obtain a patent. They can do that in the same way that you can do it, by performing a novelty search on your invention.

Consider again the case of Penalty Kick Management v. Coca-Cola Company, 318 F.3d 1284 (11th Cir. 2003), which I discussed yesterday. Penalty Kick Management (PKM) wanted to license its Magic Windows invention to Coca-Cola. And Coca-Cola was interested to the point of proposing to pay PKM $1 million plus a per label royalty for an exclusive global license. Not bad.

The Magic Windows invention consisted of “a scrambled message on the inside of a beverage container label which could be decoded and read only after the beverage container was emptied. The message would be read through a colored filter printed on a label on the opposite side of the container, directly across from the coded message.”

USPatent_5953170

But before signing the global license, Coca-Cola did a patent search on PKM’s patent applications directed to the Magic Windows invention, “to determine, inter alia, whether PKM could actually provide Coca-Cola with exclusivity over the concept embodied in Magic Windows.”

In the search, Coca-Cola found a copy of international patent application WO9309525 (“Virtual Image patent application”) filed before PKM’s patent applications. The Visual Image patent application “revealed that the two main concepts of Magic Windows — using a colored filter to decode a disguised message and placing the filter on the side of a bottle label opposite the coded message, already existed in prior art.”

Based on the Visual Image patent application, Coca-Cola concluded that the Magic Windows concept was in the public domain. It further concluded that PKM could not provide the patent exclusivity Coca-Cola was seeking. It cut off negotiations on a license with PKM.

PKM ultimately obtained US Patent 5953170, “covering some, but not all, aspects of Magic Windows.” Apparently, the narrowed scope of this patent did not interest Coca-Cola.

Not every case will turn out like it did for PKM. Sometimes a companies will be interested in an invention regardless of its patent prospects. Sometimes a company will accept a license where there is a higher royalty rate if a patent is granted an a lower royalty rate if it is not. Further, not every company will conduct an intellectual property review.

Nevertheless, patent pending alone may not convince a diligent licensee who determines that you cannot get the protection they are looking for. That is to say, the value of patent pending may be proportional to the actual novelty of your invention, at least for licensees that do their homework.

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The US Patent Application Process Flow Chart

us_patentapplicationprocessflowchart

 

Seeking a patent is not a file it and forget it endeavor. Instead, it involves a process where work is likely required in multiple phases. The process of obtaining a utility patent in the US generally involves novelty searching, application drafting, waiting for the patent office to review the application, and negotiating with the patent office about the scope of patent protection. Each of those phases is shown in the U.S. Patent Application Process flow chart above, which I will describe in more detail below.

Patent Novelty Search

The first question is whether or not to have a patent novelty search performed. A patent novelty search is designed to tell you the likelihood of obtaining a patent on your invention. You are not required to have a search performed in order to file a patent application, but it is often recommended. Without a search, you my spend a lot of money filing an application only to find out from the patent office that your patent application is refused because your invention has already been disclosed in the prior art (so it is not new). Read more about patent novelty searching here.

If, at step 10, you decide to have a patent search performed, a search is performed by a patent attorney or patent searcher. To get the most benefit out of a patent search, it is best to receive an opinion from a patent attorney about the likelihood of obtaining a patent in view of the patent search results. After reviewing the search report and discussing it with your patent attorney, at step 12, you decide whether it is worth pursuing a patent application in light of the patent search results.

Sometimes the patent search results reveal a prior art reference that is identical to the invention and it is clear that a patent is not likely to be obtained on the invention. If so, the answer at step 12 is relatively easy, because there’s no option to pursue a patent application. In other cases, an identical result is not found in the patent search results, but one or more results are relatively close to the your invention. When one or more results are relatively close to your invention, the scope of a patent you might expect to obtain could be narrow. If the scope of protection you might obtain is narrow, then you must make a business decision whether pursuing such patent protection is likely to be valuable in light of the patent application expense you will occur in doing so.

If you decide not to pursue a patent, then at step 14, you can either (1) go to market without filing a patent application and compete in the marketplace or (2) decide it’s not worth pursuing this invention further in light of the prior art and focus your efforts on other inventions. This is a business decision. If you decide to proceed to market without a patent application, you might like to consider non-patent options for protecting your invention.

In other cases, the search results are favorable with no very close results.

Patent Application Drafting

If at step 12, the patent novelty search results are favorable, or if you otherwise decide proceed with filing an application, then you move to step 16 where the patent application is drafted. The patent attorney will take the information you’ve given him or her and draft the patent application. This drafting includes preparing or having prepared drawings as well as drafting the written description of the invention, among other parts of the application. The attorney may request additional information from you during the process of drafting the application.

When a first draft of the patent application is ready for review, at step 18, the draft application is sent to you for review. You then read the application carefully. If you don’t have any changes and the application is accurate, complete, and ready to file, then at step 22, the patent attorney files the patent application at the United States Patent and Trademark Office (USPTO).

If at step 20, you would like to provide comments, changes, or additions to the draft patent application, you provide those in writing or orally to the patent attorney. Then the patent attorney goes back to step 16 to draft and revise the patent application according to your feedback. Next, the newly revised patent application is sent to you for further review at step 18. Again you review the patent application and either approve it for filing or provide further comments, additions, changes, or other feedback. If the application is approved for filing, then the application is filed at step 23.  Otherwise the feedback is taken by the patent attorney and incorporated into a further revised patent application. The review and revision process continues until you are happy with the patent application and approve it for filing.

First Provisional Patent Application or Non-Provisional Patent Application

If the patent application filed is a provisional patent application at step 21, then within one year a non-provisional patent application claiming the benefit of that provisional must be filed. If any content of the provisional needs be revised or added to, that can be done at step 22. However, any new subject matter added to the application will not get the benefit of the provisional filing date, because it was not in the provisional. Therefore, it is best to include all the subject matter in your earliest filing. However, sometimes new developments and inventions occur between the time the provisional is filed and the time for filing the non-provisional. If subject matter is to be revised or added to the content of the provisional before the non-provisional is filed, then the process goes back to step 16, 18, and 20 until the you are happy with the non-provisional application. Then at step 23 the non-provisional patent application is filed.

If the first application is a non-provisional, then you proceed directly to step 24 and wait for the patent office to review it.

As you can see, the USPTO does not substantively review provisional patent applications. A non-provisional must be filed for substantive review. Read more about choosing between first filing a provisional or a non provisional application here.

Negotiating (a.k.a Patent Prosecution)

Once the non-provisional  patent application is filed (or design patent application), at step 24, you and your patent attorney wait for the USPTO to examine the patent application. Once received the results of USPTO’s examination are received, you enter the negotiation phase with the USPTO. Patent attorneys call this negotiation phase “patent prosecution.”

Restriction Requirement / Election

First an examiner at the USPTO will determine whether you tried to claim too many inventions in one patent application. If the Examiner believes you have, he or she will issue a restriction requirement. The restriction requirement can be issued in writing or by phone to your patent attorney. If USPTO did not issue restriction requirements, patent applicants could put multiple different inventions in one application. The restriction requirement practice is designed to ensures that the USPTO need only consider one invention per application.

If you receive a restriction requirement on your patent application, then at step 27, you’ll need to elect among the various inventions and claims groups designated by the patent examiner. At that time, you (through your patent attorney) can also object to the restriction requirement and argue that it is  not a proper restriction requirement.

If the restriction requirement is not withdrawn or overturned following an objection by the applicant, or if the applicant chooses not to object, the examiner will examine only the elected invention and corresponding claims. In some cases, unelected inventions can be rejoined in the same application later in the negotiations. In other cases, you must file one or more divisional applications to cover those unelected inventions. The divisional application(s) are provided priority back to the filing date of the original application(s). Therefore, electing among the designated inventions does not mean that you will lose the unelected inventions, if those inventions are rejoined or pursued in divisional applications.

Substantive Examination

After the election or if no restriction requirement is made, the examiner will substantively examine the patent application to determine whether the claimed subject matter in the patent application is new in relation to the prior art and whether the other requirements for patenting are met. The USPTO will issue an “Office Action” explaining the results of their substantive examination.

Allowance

If the patent application is allowed on the first review by the patent office, then at step 26 a patent is very likely to be granted at step 29 if the issue fee is paid at step 28. This is known as first office action allowance. First office action allowance is not very common.

Also, the USPTO can withdraw allowance of application prior to a patent issuing, if they believe the allowance was a mistake. It is not common for an application to be withdrawn from allowance by the USPTO.

Rejection

A study of 20,000 patent applications in 2010 found that between 73% and 96% of the utility patent applications received a rejection on the first review by the USPTO (the first office action). Therefore, it is common for a patent application to be at least partially rejected upon first review. It is further common for a patent application to be allowed after one or more rounds of negotiation following the first rejection. Therefore, it is very common for patent applicants (through their patent attorney) to negotiate with the USPTO in order to obtain a granted patent. A first rejection is usually not the end of the road, it is the beginning of negotiations with the USPTO.

If the patent application is rejected in whole or in part, then at step 30, your patent attorney will review the content of the office action which explains the rejection(s). The patent attorney will also review the prior art references (e.g. prior public patents and patent applications) cited in the office action. The patent attorney will then assess the office action and provide the you  with the your options at step 32 for responding.

As you can see in the diagram at step 34, there are at least four potential options after an office action rejection: drop the application at step 42, draft and file a written response at step 36, request an interview at step 38, or file an appeal at step 40.

1. Drop and Abandon Patent Application

Sometimes the client will decide to drop the application at step 42 in light of the office action. This may be due to the client’s decision, separate from the patenting process, that the invention no longer warrants pursuing patent protection. This may be due to the lack of commercial success of the invention or other business happenings related to the invention or the applicant.

In other cases, the prior art cited by the examiner may be such that the likelihood of obtaining a valuable patent is not high and the client does not want to spend further resources in an attempt to obtain a patent. This may happen in the case where a patent novelty search was not performed before filing the patent application.

In other cases, the prior art cited by the examiner may narrow the scope of the subject matter that could reasonably be protected by a resulting patent to the extent that such protectable subject matter  is not commercially valuable enough to the client to continue pursue the patent application.

If you decide to drop the patent application, a response will not be filed to the office action. After the time period for response has expired the patent application will be abandoned and no patent will issue from it (unless properly revived based unintentional abandonment by petition).

2. File Written Response

If you decide to have a response drafted and filed, then at step 36 the patent attorney will prepare a written response to the office action. The patent attorney may amend the claims to avoid prior art, provide arguments why the examiner’s interpretation of the prior art or the examiner’s assertions are incorrect, provide a declaration from the inventor regarding aspects of the invention, and/or present other arguments or evidence related to the patentability of the claimed invention. The you may provide feedback regarding the written response to the office action. After the office action is filed, you will wait for a subsequent USPTO office action at step 24.

It is not unusual for the applicant to need to file responses to multiple office actions.  Therefore, the applicant will may through steps 24, 26, 30, 32, 34, 36 and back to step 24 more than once (optionally including one or more rounds of interview at steps 34, 38, 44) .

In some cases, the applicant’s response to the first office action will overcome the prior art references cited by the examiner in the first office action. But the examiner has the option to search for additional prior art references to meet the claim limitations added in the first response. So as long as the applicant is making changes to the claims, the USPTO examiner has the opportunity to search and present new prior art references and arguments addressing those added or changed claim elements.

3. Interview with Patent Examiner

If you decide to proceed with an interview, the patent attorney will contact to the examiner at the USPTO and request an interview on a particular date and time agreeable between the examiner, patent attorney, and sometimes the patent applicant or inventor.

An interview provides the the patent attorney and the applicant/inventor the chance to orally discuss the patent application, the office action, the prior art cited in the office action, possible amendments to the claims to overcome the prior art, and other evidence relevant to the patentability of the invention defined in the claims. Sometimes the patent attorney will send proposed amendments to the patent examiner before the interview occurs. The interview can be held by phone conference or can be held in person at the USPTO’s offices.

At step 44, if the interview is a success, then the examiner will issue a notice of allowance  allowing the patent application to grant into a patent. This process can take a number of forms. In some cases, the examiner will be convinced by the applicant’s argument regarding the allowability of the claims without further amendment. In other cases, the examiner and the applicant may come to an agreement about modifications to the claims  or other actions that would result in an allowance of the application. Sometimes the examiner will put through those amendments directly by way of an examiner’s amendment. Other times the applicant will need to file a written response making the amendments that were agreed to lead to allowance.

In other cases, there is no agreement resulting from the interview, but often the applicant’s attorney learns information from the interview that will help prepare a response or decide whether it is time to appeal. If the interview does not result in an agreement for allowance, then the patent attorney proceeds to step 32 to advise the client about the options in light of the interview. Then at step 34 the client can choose among the options. It is unusual for another interview to immediately follow a prior interview. So after an interview, the options typically are to prepare and file a written response, drop the application, or pursue an appeal.

4. Appeal

Generally, when it appears that no further amendment or argument with the examiner is likely to result in an allowance of claims acceptable to the client, it may be an appropriate time to pursue an appeal. The appeal process is started by filing a notice of appeal at step 40. Then the appeal process proceeds at step 46. A discussion of the appeal process will be provided in a separate post. Obviously, an appeal can result allowance of the patent application, which would then proceed to step 28, although not shown in the flow chart above.

Allowance of Application and Patent Grant

When the USPTO is willing to allow the patent application to issue as a patent, either at step 26 or following a successful interview at step 44, the USPTO will issue a notice of allowance. The notice will indicate the application is allowed and will require the applicant to pay a government issue fee a set time period (usually within three months) of the date of the notice of allowance. At step 28, the issue fee is paid by the applicant (or the applicant’s attorney on behalf of the applicant). Shortly thereafter a patent is granted at step 29. After a utility patent is granted, maintenance fees must be paid at predefined intervals to keep it alive.

While each patent application is different, the flow chart and description above provide a summary of the various steps and decisions that might arise in pursuing a patent application in the US.

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How to Patent Search

PatentSearchCan I patent this invention? One of the first steps in the patent process is to determine whether you can obtain a patent on the invention. The heavy lifting of this determination is a patentability search, also known as a patent novelty search. The purpose of the search is to give you information on whether your invention is new and therefore patentable. Can you do that search yourself?

Searching Yourself v. Professional Searching

Yes, but patent searching is an art that you get better at with repeated practice. Therefore, a professional patent searcher is likely to uncover results that you did not find given the professional searcher’s experience, access to search tools, and knowledge of searching techniques.

However, you may like to perform patent searching on your own because you could identify relevant prior art references, which if such references disclose all the features of your invention, would enable you to avoid the cost of hiring a professional patent searcher.

Yet, before concluding your invention is not patentable based on the results of your search, you should consult a patent attorney for advice as to whether you could obtain patent protection even in light of the prior art references you found. In some cases, results that appear to block your ability to obtain a patent can be overcome with the appropriate patent strategy and patent drafting approach.

Always Relevant Results

There is relevant prior art for almost every invention. Therefore, it is extremely unlikely (or impossible?) that a patent search will return no relevant prior art references. So when someone says they searched the patent office records and there is nothing like the invention, I know that there is more than nothing relevant. The issue is usually (1) that the search scope was not broad enough, or (2) the search simply did not locate the relevant results. In the first case, the search scope is usually not broad enough because the inventor/client does not realized the scope of relevant inventions. For example, if the invention is related to car horns, the search should not be limited to only car horns, but should extend to any vehicle horn, such as a truck horn, a boat/ship horn, tractor horns, motorcycle horns, possibly a bicycle horns or other non-motorized vehicles, possibly stationary horns, etc.

So, if your search uncovers nothing relevant, then you know you need to keep searching or hire a professional patent searcher.

To gain an understanding the search process we can look to the manual that the Patent Examiners follow when examining patent applications, which is titled, the Manual of Patent Examining Procedure (MPEP). The MPEP provides the high level search approach: “(A) identifying the field of search; (B) selecting the proper tool(s) to perform the search; and (C) determining the appropriate search strategy for each search tool selected.” MPEP 904.02.

Problems With Text-Only Searching

That sounds pretty straight forward.  The devil is in the details. Before getting to a more specific search strategy, let’s look at the warnings that the MPEP provides about text searching.

The MPEP warns against relying on text searching alone:

Text search can be powerful, especially where the art includes well-established terminology and the search need can be expressed with reasonable accuracy in textual terms. However, it is rare that a text search alone will constitute a thorough search of patent documents. Some combination of text search with other criteria, in particular classification, would be a normal expectation in most technologies.

[MPEP 904.02 (emphasis added)].

Text searching is keyword searching. Text searching is when you enter words into a search engine and the engine returns results having those words.

The problem with text searching is that a patent attorney can act as a lexicographer, that is the patent drafter can make up words, assign words meanings other than their normal meaning, and can use terms other than the common terms for a given part, component, or feature of the invention. This is what makes text-only searching problematic.

The MPEP discusses the difficulty in choosing the right textual terms to search for a given invention:

Examiners will recognize that it is sometimes difficult to express search needs accurately in textual terms. This occurs often, though not exclusively, in mechanical arts where, for example, spatial relationships or shapes of mechanical components constitute important aspects of the claimed invention. In such situations, text searching can still be useful by employing broader text terms, with or without classification parameters.

[MPEP 904.02 (emphasis added)].

For example, U.S. Patent 5,185,953 is for a mouse trap. But the title of that patent is not “mouse trap,” but instead is “rodent extermination device.” Also, U.S. Patent 2,415,012 is for the Slinky toy. But that patent does not use the term “Slinky.” And, it’s title is “Toy and Process of Use.”

The MPEP provides one solution to the text-only search problem and that is a classification search:

The traditional method of browsing all patent documents in one or more classifications will continue to be an important part of the search strategy when it is difficult to express search needs in textual terms.

[MPEP 904.02 ].

That’s right, for some inventions, it may be necessary or advisable to browse (e.g. look at) all patents within one or more classes. Looking at each patent within a classification avoids the lexicographer problem explained above, because browsing the drawings or other content of a patent document can identify relevant patents that might not be found by text searching.

It can be tedious and time consuming to browse all patents within one or more classes. This is especially true if you don’t have access to search tools that allow quickly viewing each patent and moving to the next. Regardless, depending on the type of invention, classification searching is likely necessary.

Patent Searching Framework

While classification searching is often needed, it can be difficult for a novice to be as effective searching the classification system as a professional searcher that has searched the classification system numerous times and has a familiarity with it.

Therefore, we can start with text searching to find relevant classes to look to. Alternatively, you can browse or search the classification scheme for relevant classes (skipping to step 8).

I suggest the following framework for searching:

  1. Brainstorm keywords describing the invention
  2. Perform keyword searching to identify some relevant patents
  3. Identify new keywords in found relevant patents, search with new keywords
  4. Review backward looking cited references and forward looking references
  5. Note the classes of the relevant patents
  6. Review class definitions of noted classes
  7. Review adjacent classes to the noted classes
  8. Search and browse CPC scheme for additional relevant classes
  9. Perform classification searches
  10. Optionally narrow classification search by keyword
  11. Keep searching

I’ll explain each step in detail.

1. Brainstorm keywords describing the invention

Create a list of keywords that describe the invention, including important features of the invention. From those keywords, look up synonyms to each a thesaurus. The identify search groupings of keywords for search queries.

Here are questions suggested by the USPTO to assist in developing a list of relevant keywords:

  1. What does the invention do? (Essential function of the invention)
  2. What is the end result? (Essential Effect or basic product resulting from the invention)
  3. What is it made of? (Physical structure and components)
  4. What is it used for? (Intended use)

Let’s say you wanted to find patents directed to a method of purchasing a product from an online store with one click. Amazon obtained such a patent, U.S. Patent 5,960,411 (“the ‘411 patent”) is popularly known as the Amazon one-click patent. If you search Google patents for “one click order” the ‘411 patent will be the first result. However, this is likely only because this is a famous patent that received a lot of media attention.

If this patent was not famous, you probably would not find it by searching “one click order.” Why? because nowhere in the patent does it say “one click.”  Instead it provides, for example, “The client system … displays an indication of an action (e.g., a single action such as clicking a mouse button) that a purchaser is to perform to order the identified item.”

Synonyms for “click” in this circumstance include action, act, selection, process, motion, operation, movement, activity, etc. Synonyms for single include one, only one, etc.

2. Perform keyword searching to identify some relevant patents

Now you can take those search terms and combine them to perform various searches in the patent databases.

What are the patent databases? First are the USPTO Patent and Published Patent Application databases. You can perform word searching via the web in those databases. However, patents from 1790 to 1975 are not text searchable. So text searching will not show any results for this time period. This is likely not a problem for newer technologies. However, many inventions have relevant prior art from these time periods. You can review the search options at the USPTO help page.

Another search tool is Free Patents Online (FPO), which is relatively fast. The patent documents are hyperlinked so you can navigate from one patent to the next rather quickly.

The problem with FPO, and with the USPTO tools, is that you can not quickly view the drawings of a patent. FPO and the USPTO do not show you thumbnail images of the drawings when you first get to the detail page for a particular patent. In FPO you have to click on the view PDF link and wait for the PDF to load in your browser. The same is true for the USPTO databases.

Google Patents is better at quickly showing images of the patents. The result list shows thumbnail images of the first page of each patent. When you select the patent, the patent detail page shows thumbnails of all the drawings. When looking to browse images, Google Patents makes the job easier than the USPTO or FPO.

Some have noted that Google’s patent database has holes, in that its missing patents know to exist. So, you should not rely exclusively on Google Patents for all of your searching. In general, it is good to use a mix of tools when patent searching for completeness.

3. Identify new keywords in relevant patents, search with new keywords

When you find a relevant patent document, review it to see if it uses terms related to your invention that you did not think of initially. Add those new terms to your search keywords and preform additional searching with those new terms.

4. Review backward looking cited references and forward looking references

U.S. patents and published patent applications (and many foreign patent documents) cite to other prior patents, patent applications, and publications. These backward looking citations to patent documents (also know as “references cited”) are made by the patent applicant or the patent examiner during the patent application process. Either the patent applicant or the patent examiner believed that the references cited were related to some aspect of the invention. Therefore, if you find a relevant patent, you should look to the references cited, which may also be relevant. Sometimes these references cited will be more relevant to your invention.

Below is a excerpt of the references cited from the front page of the ‘411 patent.

ReferencesCited

If the ‘411 patent was a relevant patent, you’d want to look at some or all of these references cited. The USPTO, Google patents, and FPO provide hyperlinks to each of the US patent documents cited. However, the USPTO does not provide the title for each reference cited. The title can be helpful in determining whether the reference is relevant and worth investigating.

Here is a portion of the cited references from Google’s webpage for the ‘411 patent:

GoogleReferencesCited

Here is a portion of the cited references from USPTO’s webpage for the ‘411 patent:

USPTOCitedReferences

Not only can you find backward looking references cited, but you can also find forward looking references. Forward looking references are later patent documents that cite back to the patent, e.g. back to the ‘411 patent. A references is a forward looking reference in that it is a reference to a later patent document. The printed patent will not show forward looking reference because they are unknown at the time that the patent is granted. Forward looking references occur overtime as later patents cite back to an issued patent or a published patent application. The USPTO and Google provide forward looking citations, but presently FPO does not.

The forward looking references are accessible at the USPTO website by going to the patent’s webpage and clicking on the “[Referenced By]” link (shown in the screenshot above).  The forward looking references are provided in the “REFERENCED BY” section of Google’s webpage for the ‘411 patent.

The backward looking references cited in the patent and the forward looking references that cite back to the patent document from later patent documents are important sources for finding other relevant patent documents.

5. Note the classes of the relevant patents

The USPTO has a subject matter classification system, where the USPTO classifies patents based on the subject matter of the patent. The classification system is an arrangement of hierarchical categories used to organize patents and patent applications by their characteristic. Therefore you can browse or search patent and published patent applications within a particular subject matter classification. The patent examiner specifies one and usually more than one class that the subject matter of the patent document pertains to.

This is the classification section of the ‘411 patent:

Patent_Classificiation

The international class is specified at G06F 17/60. G06F is the Electrical Digital Data Processing class. However, classes change over time, so at the time of this post the 17/60 subclass no longer exists. To find the current class that corresponds to the 17/60 class you can goto the USPTO webpage for the ‘411 patent. At the time of this writing, the USPTO webpage for the ‘411 patent shows the following current classifications:

USTPO_Web_Classification_US5960411

The current international class for the ‘411 patent is G06Q 10/00.

There are at least three classification schemes (1) the US patent classification scheme, (2) the international patent classification scheme, and (3) the cooperative patent classification scheme.

The USPTO switched from using the US classification scheme to cooperative patent classification (CPC) scheme. In 2015, the USPTO stopped classifying patents in the US Classification system.

This post will focus on CPC based searching. The current CPC class of the ‘411 patent is G06Q (Data Processing Systems or Methods) and the subclass is 10/087 (Inventory or stock management, e.g. order filling, procurement, balancing against orders).

6. Review class definitions of noted classes

Beyond the primary class/subclass of G06Q 10/087 of the ‘411 patent, you should browse the class/subclass titles and definitions for each of the CPC classes listed. You can find the class/subclass titles and definitions at the Classification search page.

Not only does a one-click purchase involve “order filling” in subclass 10/087, but as noted above it may involve the following additional subclasses:

  • G06Q 20/04 – Payment circuits
  • G06Q 20/12 – Payment Architectures specially adapted for electronic shopping systems
  • G06Q 30/04 – Billing or invoicing
  • G06Q 30/06 – Buying, selling or leasing transactions
  • G06Q 30/0633 – Buying, selling or leasing transactions, electronic shopping: lists, e.g. purchase orders, compilation or processing
  • G06Q 30/0635 – Buying, selling or leasing transactions, electronic shopping: Processing of requisition or of purchase orders
  • G06Q 30/0635 – Buying, selling or leasing transactions, electronic shopping: Shopping interfaces
  • Y10 715/962 – Data processing: presentation processing of document, operator interface processing, and screen saver display processing: Operator interface for marketing or sales

Additionally the patent office considered relevant the class G07F 11/00 for “Coin-freed [payment activated] apparatus for dispensing, or the like, discrete articles:where the dispenser is part of a centrally controlled network of dispensers.” You might not immediately think of dispensing devices as relevant to a search for one-click online purchases, but they are related in that it is possible that a purchaser could receive a product with one action in both cases.

Class G07F 11/00 is an example of a class that you might not have thought of unless you reviewed the classes listed on relevant patents you find in your search.

You should make a list of relevant classes for classification searching. This list will be expanded and refined in steps 7 and 8 below.

7. Review adjacent classes to the noted classes

Looking to the CPC schedule/scheme you can view the classes that are adjacent to those you have identified in the prior steps. It is possible that adjacent classes will be as relevant or more relevant than the classes you have already identified. This is an excerpt of the class scheme adjacent G06Q 10/087.

AdjacentPatentClasses

 

8. Search and browse CPC scheme for additional relevant classes

Next, to be sure that you find all the the potentially relevant classes you should keyword search the CPC Scheme and browse the CPC Scheme.

To search the CPC scheme, goto www.uspto.gov and enter keywords into the search box in the upper right corner. This is what the search box currently looks like:

CPC_Keyword_SearchingStart each search with “CPC scheme” followed by your search terms, in this case “online purchasing.” The G06Q class is the first class in the result list, which matches the class G06Q that we found in the ‘411 patent. However, do not stop there, search with other keywords and combinations of keywords to find relevant classes.

9. Perform classification searches

Goto the patent search engines and search for patents and patent applications in the classes that you identified above.

At the USPTO you can search for all patents in class G06Q 10/087 by typing “cpc/G06Q10/087” on the advanced patent search page and all published patent applications in that class by performing the same search on the manual patent application search page. The search syntax is CPC/ followed by the class and subclass without any spaces.

Google Patents advanced search page provides a field for Cooperative Classification searching where you can enter the class/subclass without any spaces “G06Q10/087”. At the time of this writing, it does not appear that FPO has a field for searching the CPC.

10. Optionally narrow classification searches by keywords

At the time of this post, USPTO records show 5,046 patents in class G06Q10/087. In some cases, you may have to browse each and every one of those patents. In some cases, you may be able to refine your search by adding keywords to search within that class to the reduce result set. However, narrowing the search results by keyword runs into the keyword searching problem explained above.

11. Keep searching

One of the the hardest things about patent searching is knowing when you are done. Is it that no problematic patent document exists related to your invention or does it exist and you failed to find it?

There’s no universal answer to the question. Knowing whether a search is complete is usually a product of knowledge that you’ve covered all the relevant patent classes combined with knowledge borne by experience based knowledge of where you should be searching.

This post should give you a framework for patent searching. Then you can take those results to a patent professional for an opinion on how they impact your ability to obtain a patent.

The goal of a do-it-yourself patent search is to find patent documents that could present an obstacle to your effort to obtain a patent. If you do identify a potentially problematic patent document and a patent attorney confirms it is a substantial obstacle to obtaining a patent, you might  save money by doing your own patent search.

However, as you can see above patent searching is not easy. The ability to perform a complete patent search is a product of experience, which there is no first-time DIY substitute for. Therefore, in the case you do not find any patent documents that are close to your invention, your next step is to have a professional patent search performed.