Filing a Patent Application and Patent Searching: Rising in the EAST, Setting in the West


Before filing a patent application, a search is typically conducted to discover patents, patent applications or other publications (collectively known as prior art) that may affect whether an invention may be found patentable. Many search tools are publicly available and can provide search results to help focus the subject matter of a patent application and/or provide an indication of what to expect from the United States Patent and Trademark Office (USPTO), after an application is filed. Some of the most popular (and free) search tools used by patent examiners, businesses, attorneys, and professional searchers include the Internet, Google Patents, Espacenet provided by the European Patent Office (EPO), the World Intellectual Property Organization (WIPO) PATENTSCOPE, and the USPTO’s Patent and Application Full-Text and Image Databases (PatFT and AppFT, respectively). Additionally, a search for non-patent literature is often conducted using Google Scholar, local libraries, company white papers, and online academic databases. However, most USPTO patent examiners and professional searchers would likely agree that no patent search tool compares to the USPTO’s Examiner Automated Search Tool (EAST).

Of the publicly available search tools, EAST is by far deemed the most powerful search tool by providing numerous search criteria for patents and patent applications, while catering to a variety of user preferences including the screen display of images, text, and the listing of results; highlighting; and a note-taking feature. Regarding search criteria, EAST can be used to search for prior art by the inventor’s name, title, date, assignee, operators (i.e. AND, OR, WITH, etc.), keywords, and truncations of any search terms, just to name a few.

So, the question remains, how can you get access to EAST? If you live in or near Alexandria, VA, you’ve got it made! The USPTO headquarters offers a public search facility full of computers that allow members of the public to access EAST. EAST’s predecessor, Web-based Examiner Search Tool (WEST), is a similar tool that can also be accessed from the public search facility, but is not as widely used. The search facility even offers full-time personnel to staff the search room to help individuals navigate through EAST and provide training classes. Additionally, materials are available that provide search terms and steps to conducting a meaningful search in EAST.

The USPTO’s satellite offices offer a smaller-scale version of the public search facility offered at the USPTO headquarters. If you live in or near Dallas, TX, you’re in luck! With the Dallas office opening on November 9, 2015, it won’t be long before EAST becomes available to an even larger group of users.

While searching for patents can be cumbersome and require some skill, a patent attorney can help tremendously in ensuring the best search results are identified and can interpret how the subject matter of search results may impact the road to getting a patent, prior to spending money on filing a patent application. Further, by performing a search prior to filing a patent application, this may reduce the risk of encountering any “surprise” prior art references during examination. Additionally, patent searching can help to increase the likelihood of placing a carefully crafted patent application in condition for allowance. Consequently, patent searching can help the subject matter of a patent application rise to an allowance, especially by using EAST, which will soon be set in the West -- the Dallas, TX USPTO satellite office.


About the Firm:

Klemchuk LLP is a litigation, intellectual property, transactional, and international business law firm dedicated to protecting innovation. The firm provides tailored legal solutions to industries including software, technology, retail, real estate, consumer goods, ecommerce, telecommunications, restaurant, energy, media, and professional services. The firm focuses on serving mid-market companies seeking long-term, value-added relationships with a law firm. Learn more about experiencing law practiced differently and our local counsel practice.

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