1.
Prior Art: Searching
Strategies and
Techniques
Shelley Couturier | July 27, 2021
This presentation is for information purposes only and does not constitute legal advice.

2.
Format
• 10 Minutes: Ice Breaker
• 15-20 Minutes: Problem Solving
• 30-35 Minutes: New Material

3.
Ice Breaker
Imagine you are a superhero. Your
arch-nemesis’ mission is to annoy and
torment you. How would they do
that?

4.
Shared Problem Solving
• Fun Strategy Tidbits?
• Any problems you are encountering
with the USPTO?
• Any practice issues arising?
• Any technical issues you are facing?

5.
Overview
• Why inventors and companies should have a
professional search conducted
• Types of searches and scope
• Tips for searching
• Conducting the search
• Reporting the search results

6.
Why a Professional Search: First steps
• Ensure novelty and/or non-obviousness of your invention
– Know what’s in the public domain before investing time,
resources, and money
– An early opportunity to change design plan to overcome
existing art
– Reduce prosecution costs by filing properly scoped initial
claims

7.
Why a Professional Search: Offensive
• Patents are business assets that add value and give your
business a competitive advantage
– Can you freely produce and sell your idea
– License or enforce your patent
– Obtain investment funds or stimulate an acquisition
– Capture the white-space
– Track your competitors, inventors and technology area
* https://www.linkedin.com/pulse/flirting-danger-how-bumbles-ipo-driving-surge-ip-claims-
towers/

8.
Why a Professional Search: Defensive
• Protect yourself from others
– Corporations:
• Goal of having a large number of patents in their portfolio for
cross-licensing and leverage (quantity vs. quality)
• Enforce their patents
– Startups:
• Focus on the core invention (quality vs. quantity)
• Ensure breadth of coverage
• Search for any in-force claims you may potentially infringe

9.
Search Types
• Patentability
– The perfect search strategy to determine novelty and non-
obviousness during the initial stages of product planning and
development; completed prior to investing time and money
– Focus: worldwide patents, published applications, NPL
having any priority date
– Scope: features, functionality, and breadth of the invention;
the problem solved; keywords, synonyms, equivalents;
classification / subclass

10.
Search Types
• Validity / Invalidity
– Conducted after the issuance of a patent to locate any prior
art before the priority date that validates or invalidates the
claims of that patent
– Focus: worldwide patents, published applications, NPL
having an earlier publication date or earlier priority date
– Scope: understanding of the allowed claims; keywords,
synonyms, equivalents; forward/backward search of
examiner-cited references; file wrapper information;
assignee/inventor; classification/subclass

11.
Search Types
• Infringement / Noninfringement
– Investigate whether claims of an enforceable, unexpired patent and
published application cover or read-on your product or service; OR
whether another product or service infringe your patent claims
– Focus: exact or broader claims in unexpired patents and/or
published applications (US or other countries depending on client);
unexpired references only
– Scope: understanding of the product/service; keywords, synonyms,
equivalents; forward/backward search of examiner-cited references;
assignee/inventor; classification/subclass

12.
Search Types
• Freedom-to-Operate or Clearance
– Can you freely produce, use, or sell your product/service in a
particular country? Is your product/service already in the
public domain?
– Focus: worldwide patents, applications, NPL; claims of
unexpired patents
– Scope: Understanding of the product/service; keywords,
synonyms, equivalents; forward/backward search of
examiner-cited references; file wrapper information;
assignee/inventor; classification/subclass

13.
Search Types
• State of the Art
– Gather trends, companies, and inventors in a particular
technology field in order to assist R&D, marketing,
acquisition value, joint ventures, business funding, licensing,
etc.
– Focus: worldwide patents, applications, NPL; may be date-
limited to exclude older technology
– Scope: understanding of the technology field; iterative
process that may narrow and broaden depending on the
client’s focus

14.
Search Types
• Landscape
– Ensure sound business decisions and investment,
supports determining commercial or licensing value of
your patent; helps understand the benefits or risks in
entering a new technology area; provides competitive
intelligence; identifies white space in crowded fields
– Focus: worldwide patents, applications
– Scope: understanding of the technology field; generally
an on-going and iterative process that narrows and
broadens depending on the client’s focus

15.
Searching Strategies
Tips to find the needle in the haystack
• Forward/Backward search of examiner-cited
references, including NPL
– These are the closest-found references based on examiner
searches
– Each reference provides more references that can be
reviewed
– Provides keywords, synonyms and equivalents that may be
unknown
– Glean the classification / subclasses at that time

16.
Searching Strategies
Tips to find the needle in the haystack
• Classification / Subclasses
– Enter keywords at
https://www.uspto.gov/web/patents/classification/, to select the
classification and subclasses – importantly, the keywords need to
focus on the inventive element(s)
– Easier, quicker methods to determine the classification:
• Use the examiner-cited references, if available
• Perform a quick keyword search and note the classifications of the
closest found references
– A comprehensive search should include a review of all references in
a core class / subclass for relevancy

17.
Searching Strategies
Tips to find the needle in the haystack
1. Search the structure / function (What is it?)
2. Search the problem solved or end result (What does it do?)
3. Combine what it is and what it does
– Start broad and narrow:
• Search using main keywords, narrow by adding more keywords,
iteratively narrow by grouping keywords with Boolean operators,
rearranging the keywords and groupings, and using the class / subclass
– Start narrow and broaden:
• Combine what it is and what it does and work outward by removing
keywords
• Search within the class / subclass using keywords

18.
Searching Strategies
Tips to find the needle in the haystack
• Some technology tips:
– Mechanical (generic terminology): review the drawings first
– Electrical (very crowded tech, class searching very difficult):
search Asian databases (JPO), IEEE; f/b search of cited
references
– Business methods (generic terminology; not represented in
drawings): search the problem solved or the end result
– Software: search what it does or the problem solved
– Chemical, Biotech (brand names, compounds, etc.): generally
requires a skilled searcher who has experience in the
technology

19.
Searching Strategies
Tips to find the needle in the haystack
• Use several different databases:
– Google, Google Patents, Google Scholar
– Free Patents Online, ProQuest, USPTO
– Espacenet, WIPO, JPO, EPO
– Science Direct, IEEE
*Each database / search engine uses Boolean commands,
truncation wildcards, and proximity operators differently

20.
Searching Strategies
Tips to find the needle in the haystack
A patent agent or searcher knows the keywords, synonyms, and
equivalents; can look up classifications; and uses various
Boolean combinations and search strings to find prior art.
However, more importantly, an agent understands that
searching is not only focused on the mechanics of the search
without having an overall understanding of the invention.
When reviewing references, a patent agent understands the
context of the keywords used in the descriptions.

21.
Invalidity Search:
Claim 1
US Patent No. 9,736,792 B2,
Balasubramanian et al.
Priority Date: 1/16/2013
Cont. of US 9,161,314 B2
Classification:
CPC: H04W52/30;
G08B21/182; H04W52/22;
H04W52/281; H04W52/367
Field of Classification:
H04W52/281, 52/367, 52/22

22.
Apple’s Pre-Appeal Brief Request for Review

23.
Reference No. Pub Date Title Inventor
Claim 1 Location Segment
A method implemented in a mobile device, the method
comprising:
receiving a temperature reading from a sensor included
on the mobile device;
comparing the temperature reading to a threshold
temperature;
sending a power cap setting message to set a power
cap when the temperature reading is greater than the
threshold temperature, wherein the power cap is a
non-zero maximum transmission power of the
mobile device; and
sending a power cap release message to release the
power cap for at least a period of time if (i) the power
cap is set and (ii) a feedback message is received, the
feedback message indicating that the mobile device
is transmitting a critical message.

24.
1. Priority date is before
critical date of Apple
(pre-AIA)
2. Review the Title
3. Review the Abstract
4. Read the description
5. Note the classification
6. For a comprehensive
search, f/b search the
examiner-cited
references, add any
new synonyms or
equivalents, add the
relevant classifications

25.
CAVEATS
• Searching is subjective; patent examiners are subjective
• With over 11,000,000 patents, applications and NPL, a
comprehensive and thorough search requires working
closely with the client in order to perform a focused
examination
• Searching will not uncover references that have not
been published or remain trade secrets