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The main problem is searching for prior art. There are AI search tools but they usually aren't good in my experience. It's rare that an AI search tool will return prior art that can be used in a rejection. Usually the prior art these tools find is related but not good enough. But sometimes (perhaps through random chance), a solid reference can be found. I found a 102 reference (the strongest kind) a few weeks ago for a recent application I worked on by using an AI search tool. I missed that reference earlier due to a text search I did missing some synonyms if I recall correctly.

Don't take my word for it... here's r/patentexaminer on the USPTO's latest internal AI search tool: https://www.reddit.com/r/patentexaminer/comments/ybbb60/is_t...




Whether that’s true of current AI or not, it’s temporary.

Finding prior art is inherently a “graphy” problem and current AI is getting better at graphy problems by the day (probably even by the hour). I have zero doubt that AI could solve this problem, but am unsure whether it will be allowed to.


I think AI searches could be much better even without an improvement in the technology. Probably the best AI patent search tool would be written by a ML engineer who has spent time examining a wide variety of patents. The current tools seem to be written by people who have only a cursory understanding of how patent search works, and that limits the usefulness.

For example, the current AI search tools don't seem to look at patent drawings at all. This is despite the fact that in many technologies, the drawings are the easiest way to determine similarity of the technologies. The words used vary a lot, but the drawings are frequently quite similar. Existing technology could be used to make a big improvement here, I think, but the problem is that people writing AI search tools seem to go for the easiest approach and only look at the text.

It does get more complicated than that. When I examine applications with flow or electrical circuits, frequently I'll run into circuits which are equivalent in some sense but arranged differently. An AI patent search tool should be able to handle this problem.

(Again, like my other comments here, this is just my opinion, not that of the USPTO or US government.)


Is there an online training course or illustrative examples that runs one through a patent examination search?


The USPTO has some training for registered patent attorneys and agents: https://www.uspto.gov/about-us/events/international-agents-a...

It's apparently based on the training examiners get.

The USPTO also posts a lot of the slides they use for training: https://www.uspto.gov/learning-and-resources/examiner-traini...

Otherwise, I'm confident there's information out there on how to search patents, but I haven't seen it.

But I think examining an actual application will be more useful for you. You can do this yourself as practice. Find a patent application that was examined. Be sure to pick an application and not a granted patent. In the US the number will be formatted like USYYYYXXXXXXXA1. You want to do an examined one so that you can compare against what the examiner did. That will be pretty easy if you pick one that was published a while back, so YYYY could be like 2015. On Google Patents for the application you picked, look for "External links" on the top right and go to "USPTO PatentCenter". Then under "Documents & Transactions" on the left, look for "Non-final rejection". If there's a rejection posted then you can see what the examiner did and compare against what you did when you're done.

Look at the independent claims of the application and find prior art that fits the claims. Don't check what the examiner did before you search, just try searching on your own. Write an office action (the report listing why it's the same). "Map" the claims by putting in parenthesis after each claim element why the prior art shows this feature. For example:

> A widget (Bob fig. 6 shows a widget) with blue lights (Bob fig. 6 shows the lights; para. 0076 says that the lights are blue).

When you're done, compare against what the examiner did.

Be aware that it probably will take you several weeks or longer to do your first one.

Here's the USPTO's new public search tool, which is similar to the one used by examiners (main difference is that the public version only has US patent documents): https://ppubs.uspto.gov/pubwebapp/static/pages/landing.html?...

You could also read a book like Patent it Yourself by David Pressman to better understand the legal aspects than what you'll get from the USPTO's slides.

You also might be interested in some other suggestions I've made here on designing patent search systems: https://news.ycombinator.com/item?id=33519398

(Again, like my other comments here, this is just my opinion, not that of the USPTO or US government.)


Are synonyms not built in to the search tool itself? "car" also finding "automobile" etc?


I have no idea as these tools rarely explain how they work. There are a lot of AI patent search tools and I'm sure each of them works differently.

Also, don't underestimate how difficult finding synonyms is. Many examiners, myself included, keep lists of search queries with a lot of synonyms to use later. I've been doing this for nearly two years now and my saved search queries keep growing. I don't expect this to end anytime soon.

(Again, like my other comments here, this is just my opinion, not that of the USPTO or US government.)




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