Dr. Richard G. Cooper


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Providing Expert Witness Services in

Software, Internet and  Electronics Technologies


Searching for Prior Art


To search for prior art given a known patent, load the known patent by choosing the patent from the drop down list, or by typing the patent identifier into the Patent No field and pressing the Load Patent File button.  Then select the Claims tab, and left click on a claim you wish to challenge, as shown in an example below:

Next, press the Analyze button on the rightmost panel to automatically select rare or unusual words mentioned in the text of the selected claim.  Only those words which are not found in the Frequent Words list are moved to the Rare Words list.  The initial result, for this example, is shown below:

It is often necessary to edit the Rare Words list to provide the proper vocabulary for searching purposes.  Right clicking on the Rare Words list brings up a popup menu as shown below:

You can left click to highlight a specific word or group of words within the Rare Words list, and then choose Move Selected to Frequent Words to eliminate words which you don’t want to use for searching prior art.  You can copy a specific word or group of words from Rare Words to Keywords by choosing Copy Selected to Keywords.  You can simply remove a specific word or group of words from the Rare Words list by choosing Delete Selected Words

Ultimately, you must create a set of Keywords which you want to use in searching for possible prior art.  You can use Copy All to Keywords, or Copy Selected to Keywords, or even type directly into the Keywords list manually to generate the list of words you want to use to search for possible prior art. 

To see the Keywords list, choose the Search tab.  The figure below shows the Search tab after choosing Copy All to Keywords from the Rare Words popup menu:

Notice that in the Keywords list, the word “string” is misspelled as “stirring”.  This kind of misspelling can throw a monkey wrench into your search.  Using this as a keyword for search will eliminate many possible prior art patents which don’t contain the same misspelling, resulting in just the one patent you are seeking to challenge.  This is shown by pressing either the Count Hits or the Search button, which brings up the Patent tab with the original, supporting patent for this example:

To correct misspellings, simply change the spelling in the Keywords list, or delete the entire word from the list.  This results in a better search setting as shown below:

You don’t necessarily have to have a patent to prime the search for prior art.  When you are prosecuting a patent, you may have only the inventor’s description on the back of an envelope, or at best, an email, text file or Word document with some description.  You can copy that text and paste it into the Selected Claim block and press the Analyze button to collect keywords as shown in the hypothetical example below:

Whether you start with a patent you intend to challenge (for litigation, licensing, acquisition purposes, or what ever motive you have), or with a description of a potential invention you may wish to prosecute, you can generate the Keyword list by using the Analyze button or by typing words directly into the Keyword list. 

By pressing the Count Hits button on the Search panel, a total of 683 possible prior art patents are identified, and the first 50 are shown in the grid at the bottom of the figure.  The grid is colored yellow to remind you that you haven’t yet chosen to save the list of returned patents, as shown below:

You can review the titles, and determine if this search is a reasonable one.  Note that only the first 50 patents are displayed using Count Hits.  If you determine from the first fifty titles that this is a promising list, you can generate a list of the patent identifiers and titles of all hits by pressing the Search button. 

It saves time to Count Hits before you decide to perform a full Search.  If you are unsatisfied with the results from Count Hits, you can change the set of keywords, or specify other criteria to control the Search.  Under Count Hits, only the total number of hits and the first fifty items are returned for your inspection, requiring only one access to the web search engine.  Under Search, the same information is provided plus all patent identifiers and titles.  This requires one web access for every fifty items even if you later determine that the items are not promising for your purposes.  So using Count Hits is a better strategy until you determine you have the right Search specifications. 

Note that the Classes and Query Help buttons bring up information to help you further specify Search specifications.  Classes brings up the PTO list of officially designated US Classifications, which may help you limit unpromising Search returns.  Query Help brings up a list of syntax specifications for entering such restrictions as:

  • Assignee Name
  • Inventor Name
  • US Classification
  • International Classification
  • Application Submission Date Before
  • Application Submission Date After

You can use the Restrict To button to limit the keywords found to the Title, Abstract, Claims or Description of possible prior art documents, further limiting the returned items. 

Once you have identified a promising list of prior art patents, you can use the Search button to get the entire list for further review.  The figure below shows Elk for Patents™ after the full Search has been completed:

When you have determined that the list is appropriate for further, more detailed examination, you can save the returned list in a form that can be used for the patent drop down list, i.e., as a *.txt file with the patent identifiers stored one per line.  To save the list, right click on the Patent & Title grid, to display a popup menu as shown below:

Choosing the Save Search As .. entry lets you steer the search to be saved in a file that can be loaded into the patent drop down list later, when you seek to scan possible prior art patents. 

Choosing the Load Stored Search entry lets you recover the results of a prior search you have previously saved. 

Choosing Download Search List lets you give the list of possible prior arts to another process named Download Patents.  This process runs in the background as you work, and retrieves patents into the specified directory for later use. 

Typical procedure is to both Save Search As .. for later review, and Download Search List to make patent analysis easier and less time consuming for you. 

Further information on the Download Patents utility is available here – Download Patents

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