Derwent Innovation Blueprint for Success Patentability: Plan and execute a search like an examiner

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1 Derwent Innovation Blueprint for Success Patentability: Plan and execute a search like an examiner Is there patent and non-patent art that may indicate my invention is not new? Are the solutions presented by invention novel? Who are the key players in this market? Before you file a patent application, you must conduct a patentability search to determine if the invention is patentable based on published prior art. A complete, thorough patentability search helps you discover the true novel aspects of the invention and identifies any prior art the Examiner may cite in the first office action. Patentability research includes a review of the key features of the invention (as described and claimed in the drafted patent application) and a map of those key features to applicable search results. The comprehensive coverage and workflow tools in Derwent Innovation help you quickly, efficiently perform this research. Plan your search strategy 1. Outline the problems your invention solves 2. Identify the features of the invention, claimed or not, that solve those problems 3. Construct a sentence or two that relates to these features 4. Evaluate your search concepts to generate your keyword and classification search strategy From application to Step 1 Example: Control individual chips and pack chips in a stacked configuration STEP 1 From Step 1 to Step 2 Identify the claimed and disclosed feature(s) that solve the problem (Inventive feature) From Step 2 to Step 3 Describe the key concepts of the features outlined (Search Concepts) From Step 3 to Step 4 STEP 2 STEP 3 STEP 4 Select keywords from description to build your query (Keywords) Inventive Feature Search Concepts Keywords Classifications Provide upper and lower molds that surround individual chips during frying process in order to control the shape of individual chips and allow chips to be stacked Molding of masa to form tortilla chip Use of mold during frying Molds moving through the frying oil Stackable tortilla chips Molding, tortilla, chip Mold, fry Molds, move, through, oil Stackable, tortilla, chip TBD TBD TBD TBD

2 Clarivate Analytics Derwent Innovation Blueprint for Success - Patentability: Plan and execute a search like an examiner 2 Set up and execute your search strategy Search history is a fully functional search workspace where you can create, edit, and run queries. This workspace makes it easy to start with a single, simple search query and build a comprehensive search strategy. There are two basic techniques for searching: Narrow to broad approach and broad to narrow approach. The narrow to broad approach begins with searching for prior art that discloses all the elements of your invention. The broad to narrow approach consists of starting with specific and generic synonyms that describe the basic concepts associated with your invention, to capture the concepts in your art as well as analogous areas. Create a new workspace for your strategy Build your search query structure Create a new search history to organize your search strategy and track relevant queries. 1. From the Dashboard, click the Search History tile 2. Click New Search History 3. Enter a Name for your new search history and click Save 1. Click the hyperlink next to Change collections 2. Select the collections you want to search, and select Also search DWPI fields with selected collections to increase relevant results Note: You must have a DWPI subscription to use DWPI data 3. Select the Title/Abstract/Claims field Use keywords to create an initial query 1. Enter the keywords from the first search concept identified in Step 4 of your search strategy plan Example: mold, molding, fry, tortilla, chips 2. Add proximity and wildcard operators to craft an initial query; refer to the table at the end of this document for details about those operators Example: mold* NEAR15 tortilla NEAR5 chip* 3. Click Save, then select the checkbox next to the saved query and click Update Results Count to see how many records your initial query found Revise the query and compare results Patentability searches require iterative search queries to ensure you find comprehensive, yet focused results.

3 Clarivate Analytics Derwent Innovation Blueprint for Success - Patentability: Plan and execute a search like an examiner 3 Boolean, Proximity, and Wildcard Operator Reference Operator Why use it? Operator Why use it? 1. Click the row in the query list with your initial query; the query displays in the search form 2. Adjust parameters in the query to narrow or broaden your search query Example: Change NEAR15 to NEAR10 3. Click Save as New, then update the result count for that query 4. Compare the number of records found by the revised query to the initial query; look for significant changes 5. Select the checkboxes for the two queries 6. Click Combine, make sure the larger query is listed first, change the operator to NOT, and click Search 7. Review the results to see if the records found by the larger search (but not the smaller search) are relevant AND Search for two terms that must both be present. When applied to combined search queries, searches for records found by all queries. ADJn Find records with keywords in the order specified and within n words of one another. Example search: LED ADJ5 flashlight Example results: LED flashlight, LED components used in a flashlight OR Searches for two terms when one term or the other must be present. When applied to combined search queries, searches for records found by any of the queries. NEARn Retrieve records with keywords that appear in any order within n words of one another. Example search: LED NEAR5 flashlight Example results: LED flashlight, flashlight that will incorporate an LED NOT Searches for records with the first term but without the second. When applied to combined search queries, searches for records found by the first query but not found by the second query. SAME Retrieve keywords in the same paragraph. Example search: LED SAME flashlight () Enclose search terms and their relevant operators in parentheses to define an order of operations. This is especially useful when you include the OR operator in your search, as OR has lower precedence than many other search operators. Refine your query and annotate successful searches * Wildcard that substitutes for any number of characters (including 0). You can embed * within a word. Example search: nano* Example results: nanotechnology, nanocrystal Continue to adjust operators in your search query and compare query iterations until you have a results list that seems comprehensive without losing focus. As you work, use the Annotate (orange notepad) button to add notes about particular queries for later reference. Expand your search strategy with relevant classification codes Patentability research is an iterative process. Classification code searches help ensure that you find all relevant documents for a particular technology. Classification codes may also suggest new keywords to revise or expand your text searches.

4 Clarivate Analytics Derwent Innovation Blueprint for Success - Patentability: Plan and execute a search like an examiner 4 Identify potentially relevant codes 1. Click the Run button for your comprehensive, yet focused query to view its results set 2. In the Results Dashboard for that query, view the charts for Current IPC, Current CPC, and DWPI Class Note: You may also want to review IPC-4 character 3. Select the top two classification codes 4. Click Filter Results and review your results to make sure those classification codes truly apply 5. Note codes that apply to your technology for use in search queries; also note the classification system Tip: Use a custom list chart to see codes beyond the top 20. From the unfiltered results, click Charts. Select List from the Custom Chart area. On the List Chart Options screen, select your desired classification system as the Primary Field to Analyze and change the Number of Items for Primary Field to 100. Click Create to view a list of the top 100 classification codes in your results. Save or export this list to build queries. Identify additional codes for your search strategy 1. Scroll up from your results to access a search form 2. Select the search field for the classification code system for the codes you noted 3. Click the Browse button next to that field 4. Use the Browse pane to locate the codes you selected 5. Review and note similar codes to expand your strategy Notes Classification codes systems are hierarchical; always interpret individual codes in relation to codes above and below in the hierarchy The first codes listed on a patent describe the specific application claimed; later codes describe the general inventive concepts Example: An invention claims a process or apparatus and a particular product resulting from that process or apparatus; the patent is indexed first according the particular product Most technological fields have a set of multiple applicable classification codes

5 Clarivate Analytics Derwent Innovation Blueprint for Success - Patentability: Plan and execute a search like an examiner 5 Add classification searches to your search strategy 1. Click the three lines icon in the upper left of the screen, then click Search History to return to your strategy 2. Select the appropriate search field for the classification code systems you want to research Note: Make sure you use OR between each field 3. Enter the classification codes you indented 4. Click Save to add the classification code query to your search strategy Classification Code Comparison Classification System IPC CPC DWPI Class and Manual Code) Keywords Universally used, but inconsistently applied by the various authorities, and less granular than CPC. Very specific and more detailed than IPC. USPTO is the only authority that proactively publishes associated CPC codes on the front page of a patent. All other authorities retroactively apply CPC. (Japan does not apply CPC at all). Best for chemical and biopharmaceutical technologies Formulate and execute your remaining search strategy Keyword searches combined with classification searches often provide the most effective results. Align applicable classification codes with the appropriate search concepts to complete your strategy for this inventive feature. Inventive Feature Provide upper and lower molds that surround individual chips during frying process in order to control the shape of individual chips and allow chips to be stacked Search Concepts Keywords Classifications Molding of masa to form mold* near15 tortilla* near5 chip* A23L 7/13 (CPC) OR tortilla chip A23L 1/164 (IPC) Use of mold during frying Mold* near5 fry* OR A47J 37/1214 (CPC) Molds moving through the mold* adj5 ((move or transport or D13 and P28 OR frying oil through) adj5 oil) (DWPI Class) Stackable tortilla chips stack* near3 ((tortilla* near3 chip*) or A23P 30/10 (corn near3 chip*) or snack) OR (CPC) A23P 10/00 (CPC precedence) AND AND AND

6 Clarivate Analytics Derwent Innovation Blueprint for Success - Patentability: Plan and execute a search like an examiner 6 Tip: IPC and CPC codes are updated periodically and are often applied with some variability. You may want to use the * operator to search the codes at the subclass or main group level to capture all lower levels. Before using the * wildcard operator, check the index sequence of the classification hierarchy to account for sequential jumps or missing sequences. Tip: For the most comprehensive search look for relevant IPC and CPC codes, and search using the IPC-Any and CPC-Any fields. You can also search both simultaneously with the Any IPC or CPC field. Research additional search concepts and create a combined search for the inventive feature From search history, you can easily complete the search strategy you formulated for the inventive feature. 1. Create and save keyword search queries for each search concept you identified 2. Create and save classification code queries for each search concept 3. For each search concept, combine the keyword searches with the relevant classification code searches Note: Use the OR operator to combine the searches 4. Select the checkbox for the combined search you created for each search concept 5. Use the AND operator to create a final combined search with the overlap of results that discuss the inventive feature Example: Query 4 is a combination keyword and classification code search for the first search concept in the table above. Queries 5, 6, and 7 correspond to the remaining search concepts. Query 8 is a combination query of queries 4, 5, 6, and 7 combined using the AND operator. This query finds the overlap between the other searches, and the results all discuss the inventive feature. Execute the complete search strategy Repeat the iterative search strategy construction process for each inventive feature identified in Step 2 or your planning phase. Then, combine the final combined searches for each inventive feature. Use the AND operator to find results that relate to the overall invention. Use the OR operator to remove the duplicates and analyze the records that relate to each inventive feature. For thorough analysis, review the final search results and add highly relevant records to a Work File for a more detailed analysis. Example: You may want to review Dead patents that qualify as prior art but would not prevent you from marketing your invention.

7 Clarivate Analytics Derwent Innovation Blueprint for Success - Patentability: Plan and execute a search like an examiner 7 Example: Query 13 uses the AND operator to combine the resulting combined queries for each identified concept. Query 14 uses the OR operator to combine the resulting combined queries for each identified concept Find relevant non-patent literature Relying only on patent data for prior art is risky. Patentability research must consider non-patent prior art. Locate potential relevant non-patent literature 1. Locate a particularly relevant patent in the final result that covers all inventive features 2. Click the hyperlinked publication number to open the record view for that record 3. Click the Citation hyperlink 4. See if the patent has any Cited Non-patents; if it does not, click the right arrow at the bottom of the screen to go to the next patent 5. On a patent that has Cited Non-patent data, click the plus sign to expand that section 6. Click the View as Result button to see the cited nonpatent documents in your result set 7. Review the documents, then click Add To to add relevant documents to a work file Tip: Patent and Literature proximity operators do not function in the same manner. The chart below illustrates those differences (or something like that)

8 Clarivate Analytics Derwent Innovation Blueprint for Success - Patentability: Plan and execute a search like an examiner 8 Locate additional related non-patent literature 1. Click the hyperlinked Title for a relevant non-patent document to view literature record view 2. Click the Citation Information link 3. Click Find Related Records to identify articles that are relevant to your research ( Note: Related records are any two articles that share at least one cited reference) 4. Click Expand Cited Authors and Works and Expand Times Cited to find potential related art Note: Not all patent records have related non-patent citation data. You may want to use a keyword search for scientific literature records related to your invention. If you do, note that some proximity operators work slightly different in literature search than in patent search. Please refer to the Derwent Innovation help file for details. Quickly analyze your results to gain actionable intelligence In addition to knowing if your idea is novel, understanding the technical domain helps you make effective business decisions. Interactive competitive intelligence charts in Derwent Innovation make it easy to identify the major players in the technical domain, where the technology is being developed, and where the technology protected. This information also helps identify your competitors and target markets. Determine potential competitors 1. Open your final combined result set or Work File of relevant documents 2. Click Analyze, Charts (Beta) 3. Click Who are the major players? to quickly see the top 10, 15, or 20 assignees in your results and their current relative investments in the technical domain 4. Click graph sections to focus on a particular assignee or multiple assignees to compare their portfolios. 5. Use the Views panel to switch between Totals and Percentages and focus on the appropriate type of patents (Alive, Dead, or Indeterminate)

9 Clarivate Analytics Derwent Innovation Blueprint for Success - Patentability: Plan and execute a search like an examiner 9 Tip: All charts are interactive. Click any particular bar, pie slice, or figure in a list chart and your result set will filter to those records. For Competitive Intelligence charts, you must select sections and click Filter Results to update your result set. Discover where the technology was developed and locate target markets After reviewing the top assignees in the technical domain, gain insight on where the technology was developed and where the technology is protected. 1. Click the head icon and select Where has this technology been developed 2. From the View panel select Origin of technology development to determine where the technology was first filed, which likely implies where it was developed 3. Focus your search on protection level (Applications or Grants) 4. Change your view to show Publication Countries/Regions to see where the technology is protected, which could indicate your target markets Learn More with these Additional Resources Research Patents in a Specific Technology Domain Quickly research prior art Analyze the Competitive Landscape in a Technology Space