Dr. Wael Badawy, P.Eng. SIEEE SACM

This is a suggested Seven Step Strategy for conducting preliminary searches of U.S. patents and published applications using free online resources of the USPTO and its bi-lateral partner EPO (European Patent Office). Patent and Trademark Resource Centers (PTRCs) (www.uspto.gov/ptrc) are available nationwide to provide training on this Seven Step Strategy.

PTRCs provide online access to the PatFT (Patents Full-Text and Image) and AppFT (Applications Full-Text and Image) databases on the USPTO website and the Espacenet Worldwide Database on the EPO website. In addition, most PTRCs provide access to additional USPTO patent databases available through PubWEST (Public version of the Web-based Examiners Search Tool) and PubEAST (Public version of the Examiners Assisted Search Tool). Always call your nearest PTRC to make an appointment before visiting to make the best use of your time.

The use of patent classification in searching U.S. patents and published applications usually results in a more comprehensive search than one done by word and phrases (keyword searching). Because keyword searching must anticipate the often technical language of patents, it serves best as a supplement to a classification search. Accordingly, patent classification searching is the focus of the Seven Step Strategy.

The USPTO has transitioned from using the over 100 year old U.S. Patent Classification (USPC) system to Cooperative Patent Classification (CPC), a new classification system jointly developed with the European Patent Office (EPO). The USPTO currently only uses CPC for classifying new utility patent documents; however, it will continue to use U.S. Patent Classification for classifying design and plant patents. This version of the Seven Step Strategy reflects this transition to the primary use of Cooperative Patent Classification in utility patent publication searching.

The Seven Steps in a Preliminary Search of U.S. Patents and Published Patent Applications

1. Brainstorm terms to describe your invention based on its purpose, composition and use.
2. Use these terms to find initial relevant Cooperative Patent Classification using the USPTO website’s Site Search box(www.uspto.gov). In the Site search box found in the top right hand corner of the home page enter “CPC Scheme [plus keywords(s) describing invention]”; for example, if you were trying to find CPC Classifications for patents related to umbrellas, you would enter “CPC Scheme umbrella”. Scan the resulting classification’s Class Scheme (class schedules) to determine the most relevant classification to your invention. If you get zero results in your Site Search, consider substituting the word(s) you are using to describe your invention with synonyms, such as the alternative terms you came up with in Step 1. For example, if you find searching for “CPC Scheme car mirror” is getting unsatisfactory results, try searching instead with “CPC Scheme vehicle mirror.” (If you continue to be disappointed with the CPC Classification search results, look for your search word in the International Patent Classification Catchword Index https://web2.wipo.int/ipcpub/#¬ion=cw; CPC is based on International Patent Classification).

3. Verify the relevancy of CPC classification you found by reviewing the CPC Classification Definitionlinked to it (if there is one).
4. Retrieve U.S. patent documents with the CPC classification you selected in the PatFT (Patents Full-Text and Image) database (https://patft.uspto.gov). Review and narrow down the most relevant patent publications by initially focusing on the front page information of abstract and representative drawings.
5. Using this selected set of most relevant patent publications, review each one in-depth for similarity to your own invention, paying close attention to the additional drawings pages, the specification and especially the claims. References cited by the applicant and/or patent examiner may lead you to additional relevant patents.
6. Retrieve U.S. published patent applications with the CPC classification you selected in Step 3 in the AppFT (Applications Full-Text and Image) database (https://appft.uspto.gov). Use the same search approach used in Step 4 of first narrowing down your results to the most relevant patent applications by studying the abstract and representative drawings of each on its front page. Then examine the selected published patent applications closely, paying close attention to the additional drawings pages, the specifications and especially the claims.
7. Broaden your search to find additional U.S. patent publications using keyword searching in PatFT or AppFT databases, classification searching of non-U.S. patents on the European Patent Office’s Worldwide Espacenet patent database (https://worldwide.espacenet.com and searching non-patent literature disclosures of inventions using the free electronic and print resources of your nearest Patent and Trademark Resource Center (https://www.uspto.gov/ptrc).

For more information email me badawy@badawy.ca

Like most western democracies, Canada has an all-powerful supreme court sitting at the top of its judicial hierarchy with the power to overrule all lower-ranking courts, and even Parliament itself. Consisting of nine elderly and experienced judges, the Supreme Court only hears appeal cases which it deems to present an important constitutional question that deserves clarification. Most commonly, these are cases in which an accused Canadian believes an existing law, of which he has been found guilty, should not be a law at all, because it contradicts some fundamental human right protected by the Charter of Rights and Freedoms.

The ability to overturn laws of Parliament is a very dramatic power, and the Supreme Court is one of the most powerful political institutions in Canada for this reason. Rulings of the Supreme Court are closely watched and covered by the Canadian media and can often generate enormous controversy. For example:

• In the case of The Queen v. Morgentaler (1988), the Court ruled the government cannot prevent Canadian women from having access to an abortion.
• In the case of The Queen v. Keegstra (1990), the Court ruled that Canadians can be legally punished for making “hate speech.”
• In the case of Rodriguez v. British Columbia (1993), the Court ruled it’s illegal to help a sick person commit suicide.

In recent years, it has also become commonplace for the federal government to ask the Supreme Court of Canada to occasionally rule on things without the pretext of a trial. Such requests are known as Supreme Court “references.” They’re non-binding, but still help clarify the law. For instance:

• In Reference re: secession of Quebec (1998), the Court ruled that the province of Quebec could not legally separate from Canada without the approval of the Canadian government.
• In Reference re: same-sex marriage (2004), the Court ruled that marriage between two men or two women was constitutional.
• In Reference re: Senate reform (2014), the Court set out the constitutional rules for reforming the Senate of Canada.

The nine judges of the Supreme Court are appointed by the prime minister, and serve until age 75, so at any given time the Supreme Court is a medley of many different appointments of many different administrations. Traditionally, prime ministers put a great deal of effort into ensuring the court always maintains a fair geographic balance, with at least one justice for each major region of Canada.

Though Canada is now fully independent from Britain, British Common Law still applies, as it does in the United States and other former British colonies. Common Law is basically the idea that precedent matters, and that decisions and definitions set down by courts in earlier times still apply to everyone today.

Though Canadian judges now have more than enough independent Canadian legal precedent to help them make decisions, it’s not entirely uncommon for judges, when faced with a particularly thorny legal question, to refer back to the judgments of British judges in the colonial period, or even earlier, in order to provide historical context for the purpose of laws or understanding, say, what “libel” is supposed to mean. The famed Magna Carta of 1215, for instance, which first outlined basic principles of English justice, is still considered one of the foundational documents of Canadian Common Law.