An Information Bulletin on Intellectual Property activities in the insurance industry
A Publication of - Tom Bakos Consulting, Inc. and Markets, Patents and Alliances, LLC
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Tom Bakos Consulting, Inc.
Tom Bakos: (970) 626-3049
Markets, Patents and Alliances, LLC
Mark Nowotarski: (203) 975-7678
Patent Q & A
Searching the USPTO Patent Data Base
Question: How do I search the USPTO patent data bases?
Disclaimer: The answer below is a discussion of typical practices and is not to be construed as legal advice of any kind. Readers are encouraged to consult with qualified counsel to answer their personal legal questions.
(from Mark Nowotarski): Using old fashioned but very precise Boolean search logic.
Both of these databases are searchable using "key fields" and "Boolean search strings". You have to know how to use field codes precisely and how to construct search strings. The advantage of this approach is that you can hone in very quickly on exactly the patents you are looking for. The disadvantage is that it requires a little practice. This isn't Google. You can't just drop in some key words and hope something useful shows up.
The basic search string for the USPTO data base is:
FIELDCODE is a code that tells the data base where to look for the keyword. Keyword is a word related to the patents you are looking for. The broadest FIELDCODE is SPEC. SPEC is short for "specification". The specification is the main body of a patent that has a complete description of the invention and the background related to it. So if you want to find all patents that have something to do with annuities. You would submit the search string:
This search string returns 480 hits (all hit counts are as of the date of publication). That's a lot of patents to look through and many of them aren't really related to annuity inventions. They simply have the word annuity somewhere in their specifications.
A field code that is directly related to an invention in a patent is ACLM. ACLM stand for "claims". The claims of a patent are legal definitions of what the invention is. If you want to return patents that are more specifically about annuity inventions, you can use the search string:
This search string would return 149 hits. Not bad, but still a lot of patents to look through. You can further refine your search by limiting the results to a particular patent classification. A patent classification is a numerical code that indicates exactly what the invention is about. Inventions in the field of insurance have the classification "705/4". The field code for classification is CCL. So the search string for insurance related inventions is:
You can logically combine search strings using logic operators such as "and", "or" and "and not". So if you want to search for patents with annuity related inventions in the field of insurance, you would enter the search string:
ACLM/annuity AND CCL/705/4
This string would return 49 hits. That's a reasonable number of patents to flip through to find the material you are looking for. The table below summarizes these results and compares them to Google.
There are many more fields to use in your searching. They are conveniently defined on the USPTO advanced patent search page. If you are doing a prior art search, you will also want to repeat your searching on the USPTO patent application search page.
The USPTO patent databases are based on old school Boolean search strings. They take a little bit of practice to get used to. Once you've mastered the technique, however, it's a very powerful and fast way to search.
*** If you have any follow up questions on patent searching, feel free to contact Mark Nowotarsski directly at (203) 975-7678. ***
An Update on Current Patent Activity
The table below
provides the latest statistics in overall class
705 and subclass 4. The data shows issued
patents and published patent applications for
this class and subclass.
Class 705 is defined as: DATA PROCESSING: FINANCIAL, BUSINESS PRACTICE, MANAGEMENT, OR COST/PRICE DETERMINATION.
Subclass 4 is used to identify
claims in class 705 which are related to:
Insurance (e.g., computer implemented system
or method for writing insurance policy,
processing insurance claim, etc.).
Note also, that because the USPTO reclassifies patents and patent applications from time to time, the numbers for prior years or months may change.
Patents are categorized based on their claims. Some of these newly issued patents, therefore, may have only a slight link to insurance based on only one or a small number of the claims therein.
The Resources section provides a link to a
detailed list of these newly issued
The Resources section provides a link to a detailed list of these newly published patent applications.
The following are links to
web sites which contain information helpful to
United States Patent and Trademark Office (USPTO) : Homepage - http://www.uspto.gov/
United States Patent and Trademark Office (USPTO):Patent Application Information Retrieval - http://portal.uspto.gov/external/portal/pair
Free Patents Online-http://www.freepatentsonline.com/
US Patent Search - http://www.us-patent-search.com/
World Intellectual Property Organization (WIPO) - http://www.wipo.org/pct/en
Patent Law and Regulation - http://www.uspto.gov/web/patents/legis.htm
Here is how to call the USPTO Inventors Assistance Center:
The following links will take you to the authors' websites.
Mark Nowotarski - Patent Agent services - http://www.marketsandpatents.com/Tom Bakos, FSA, MAAA - Actuarial services- http://www.BakosEnterprises.com
In this issue we provide in Becoming Special, a summarization of ways that an inventor can speed up the examination process and become special.
In the Q/A Mark provides an answer to a very logical question:, How do I search the USPTO patent data bases? The USPTO makes its patent and patent application up-to-date data base of published patents and applications available for search via the internet. This can be a very useful tool.
The Statistics section updates the current status of issued US patents and published patent applications in the insurance class (i.e. 705/004). We also provide a link to the Insurance IP Supplement with more detailed information on recently published patent applications and issued patents.
Our mission is to provide our
readers with useful information on how
intellectual property in the insurance industry
can be and is being protected - primarily
through the use of patents. We will
provide a forum in which insurance IP leaders
can share the challenges they have faced and
the solutions they have developed for
incorporating patents into their corporate
Please use the FEEDBACK link to provide us with your comments or suggestions. Use QUESTIONS for any inquiries. To be added to the Insurance IP Bulletin e-mail distribution list, click on ADD ME. To be removed from our distribution list, click on REMOVE ME.
Thanks,Tom Bakos & Mark
By: Tom Bakos, FSA, MAAA, Tom Bakos Consulting, Inc. - co-editor, Insurance IP Bulletin
Patent applications are examined in the U.S. patent office in the order in which they are filed. The patent office, when it receives an application, will assign it to a Technology Center based on its subject matter. The Technology Center will assign it to an examiner. The examiner will review it in the order it was assigned to him or her.
How soon that is depends, essentially, on USPTO manpower relative to the application backlog and the number of new patent applications plus the number of requests for continued examination (RCEs) received by the patent office. Overall how long it takes from the time of initial filing to disposition of some sort (either claims allowed or abandonment) is referred to as patent pendency.
Most patent applications in the insurance and broader financial services areas are placed in an Art Unit within Technology center 3600. Per USPTO statistics, an applicant who files a business method application assigned to Technology Center 3600 and just waits can expect a first office action response to his filing in an average of 25 months (2009 data) and a final disposition (i.e.: allowance; final office action; RCE; appeal; or abandonment) in an average of 35 months. This pendency has remained fairly level over the past few years. This means that insurance applications filed in 2009 and early 2010 are getting their first office actions now.
So, when an applicant files a patent application he gets in a big, long line.
However, the USPTO has established procedures to take applications out of the normal queue in order to accelerate the examination process and achieve a final disposition within a target of 12 months. Getting accelerated examination status means one has become special.
A principal reason for allowing accelerated examinations is the anticipation that for some applications the normal pendency may delay important or significant invention beneficial in some way to society or be so long that an applicant's ability to participate in the examination process once it begins may be doubtful. But, the USPTO may make applications special because has paid additional fees or has done additional preparation which will reduce USPTO examination costs.
Applicant's Age or Health
Age 65 may have been chosen (back in 1959) for the same reason that 65 was chosen as an indicator of old age for a lot of other things. In 1959, life expectancy at age 65 was about 14.5 years. Currently, life expectancy for a 65 year old is about 19 years and life expectancy for a 70 year old is about 15 years. That makes age 70 the new 65 - although the patent office has not adjusted its requirements for becoming special based on age.
The demonstrated poor health of an applicant may also be used as a basis for petitioning the USPTO for special examination treatment. A doctor's or other medical certificate is required to support a contention that the applicant, because of poor health, may not be able to participate in the examination process if it were allowed to run its normal course. No additional fee is required.
Patent Prosecution Highway
This is, essentially, a work sharing program which allows the USPTO to reduce its examination costs when the same or sufficiently comparable claims filed in the U.S. have been allowed by a foreign office. The USPTO encourages such cost reduction by granting accelerated examination. Petition to make special must be made and certain other requirements must be met but no additional fee (as of 5/25/2010) is charged for accelerated exam through the PPH program.
Track 1 Accelerated Examination
Another Way to Become Special
Additional petition fee (not higher filing fees as for Track 1) is also required.
Accelerated Examination Support Document
Inventions directed at materially enhancing the quality of the environment; contributing to the discovery, more efficient utilization, or conservation of energy resources; or countering terrorism upon petition may be made special. If such a patent application on its face is not indicative of a material contribution, then a statement must accompany the petition explaining how the invention makes a material contribution.
Patent examination need not take forever. Using one of the above, an applicant can get even an insurance patent allowed in less than a year after filing.