Basics of Doing a Patent Search
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Patent Searching for Beginners: An Effective Strategy
Patent searching can be a complicated process. It requires an understanding of the reasons for searching a patent, the methods for searching, and the available resources to assist with the process. While it is still highly advisable to work with a trained legal professional when conducting a patent search, it is never a bad idea to thoroughly understand the patent search process and also conduct searches yourself.
Why Do a Patent Search
The answer to this question is not as obvious as it might appear. The primary reasons for conducting a patent search include:
• Novelty - If you are planning on filing a patent application for your inventions, you must demonstrate that the underlying invention is novel, non-obvious, and useful. Keep in mind that every element of the invention does not need to meet these requirements. Simply the claimed elements of the invention must demonstrate these attributes. The most difficult to demonstrate is novelty. This means that you must show that your invention has not been the subject of prior disclosure. A disclosure takes place when the invention (or closely-related claimed elements) are sold or explained in detail to the public. If a previous inventor has filed a patent application to cover an invention, then the invention is no longer novel. Understanding this before filing your application can save you time and money.
• State of the Art - If you are a researcher or actively involved in the development of products, it is beneficial to stay apprised of the current state of inventions within your field. Monitoring patent filings in specific classification codes or monitoring the patent filings of competitor companies is a good way to do this. It will give you a heads up on what is new and happening in your invention space.
• Non-Infringement - If you produce goods or are thinking of producing an invention, then you need to make certain that your invention does not infringe on the intellectual property rights of others. It is a bad feeling to realize that, after investing time and effort around commercializing an idea, that it violates the intellectual property rights of others. This can put the breaks on your business operations rather quickly.
• Drafting Aid - Drafting a patent application can be tricky. It requires a detailed understanding of the technical aspects of your invention. Also, it requires a detailed understanding of how to demonstrate the novel, non-obvious, and useful aspects of a patent within the specification and claims of the patent application. Doing a patent search for similar inventions can provide you a wealth of information on how to draft an effective patent application.
• Identity Search - Doing a patent search is a good way to find out who the inventor of a patented invention is. You may want to license or otherwise work with this individual in manufacturing the item, incorporating the item into your invention, or otherwise employing that person’s patented rights in a commercial manner.
• Competitor Analysis - Many companies routinely search for patents filed by their competitors. This keeps the searcher apprised any any novel inventions that the competitor may be bringing into the market. The searching company can plan accordingly and make strategic decisions on how to deal with the situation.
What Process Should You Follow in Conducting a Patent Search?
There are numerous techniques for performing a patent search. Most patent searching is conducted through either free of paid databases containing registered patents and previously-filed patent applications. We will go over some of these databases and how to use them below. First, however, you need to understand some of the techniques for searching patents.
The most common method of searching for patents is through the use of keywords. As the name implies, this means using keywords related to your patent to search for prior patent applications or issued patents.
This means that you need to undertake the process of identifying keywords relevant to your invention. You can do this by brainstorming things about your inventions, such as:
• What does it do?
• How does it function?
• What does it achieve?
These questions, and many others you can think of, will help you come up with good descriptors for your invention.
Next, you want to begin searching these terms in databases. We will talk about the main databases below. For now, just realize that you are going to start using these search terms to identify patents that relate to the keywords.
Just doing an open keyword search brings back lots and lots of results. So, you need a system of pairing this down. To start with, you can start out searching the most restrictive words possible and then expanding from there.
Next, you will want to start pulling some of the keywords from the related patents you discover. This is how you build on to the list of keywords — by identifying how inventors described their own inventions.
Next, you will need to start restricting your search to the various categories available within the patent database, such as the title, inventor, claims, abstracts, or entire text. These are all common search categories within most databases. Again, you will use the same process of starting narrow and then expanding.
Perhaps the most useful category for patent searching is the classifications category. Classifications are groups of like or similar inventions. Basically, the useful function of the invention generally provides the classification criteria. Patent applications are divided and subdivided by classification.
Once you have identified a number of patents that are related to your invention, record the classification code for those patents. Each country has its own system (though some systems are shared internationally) for numbering and recording patent applications. So, if it is a non-US database, you will want to identify the classification code attributed by the database you are using. Now, start using your identified keywords to search within the identified patent classifications. For more information on how to conduct a classification search, visit the LawTrades blog.
Lastly, if any relevant patent applications make reference to prior patents, this can provide a chain for searching other past and present patent applications. Basically, you will do a forward and backward search to identify related types of patent application that reference the identified relevant patent.
While keyword search is kind, you will need to use these methods in combination to carry out an effective search.
What Databases Should I Use to Do My Searching
There are lots of search resources and databases that you can use to carry out your search. Below we go over some of the most popular.
Google Patent (google.com/patents) - Google provides a very comprehensive database of prior patents filed in the United States. The patent repository provides granted patents and applications all the way back to the late 1800s. But, the greatest advantage to Google patent is that is has a very easy-to-use search interface.
There is a “regular” and “advance search” button. Follow the above-references process for keyword searching this database. Begin with the restricted fields. If your keyword search within these restricted fields fails, then you can move on to a keyword search for the entire document. You should be able to identify some relevant patents — they do not need to be perfectly similar to be relevant. Once you have a list of relevant patents, click on the “referenced by” or “citation” links for each patent. This may lead to other relevant patents. Most notably, you can make note of the classification or class for each of the patents. This will prove valuable when searching in other databases.
USPTO Database (USPTO.gov)
The USPTO is in charge of processing all patent applications in the United States.In this role the USPTO provides numerous resources to help with the process. First among them is a comprehensive database of prior patent applications and granted patents. It provides a database of full texts of patents filed after 1976. Patents filed prior to 1976 are listed in PDF format. Armed with the patent information you have acquired from Google, however, you will able to effectively search reference patents that are older than 1976.
To use the USPTO database, go to USPTO.gov and click the “search’ tab. You will need to conduct patent searches for issued patents and patent pending applications. The first step should be to use the “quick search” tab. This will allow you to conduct a keyword search based upon the same restricted classifications available in Google.
Armed with your Google and USPTO quick search results, you can then move on to a “class” search using the keywords you have identified.
European Patent Applications (http://ep.espacenet.com)
Espace is the European central patent filing office. It includes most international applications from other countries. Espace may be the most effective and comprehensive patent tool for searching international patent applications. It will allow you to search patent publications, machine translate patent documents (Chinese, Japanese, and Korean to English), track emerging technologies, and identify what competitors are developing. Most notably, it provides access to the correspondence (“File Wrapper”) between applicants/attorneys and the offices of filing (Canda, China, Europe, Korea, Japan, US, PCT applications, etc).
If you want to take it one step further, you can employ Patentscope. This is a free database put out by the World Intellectual Property Organization (WIPO). Patentscope contains patent applications from all major patent-filing countries and international patent applications filed under the PCT (Patent Cooperation Treaty). The search interface is available in 9 languages. It allows for a “simple search”, “advanced search”, “field combination search” and “Cross-lingual Information Retrieval”. Employing this database will simply add breadth and thoroughness to your patent search. The overall search process is still the same.
Work with a Legal Professional
The above-stated strategies are just broad guidance for the earliest stage of pursuing patent protection for your invention. Of course, even following these rules will not guarantee success in your patent search. Throughout the world, many millions of products have been invented and used commercially. There are literally hundreds of millions of patent application documents within the many databases discussed above.
You will need will need to use all of these tools to determine whether your invention is already being publicly disclosed. Even using these methods, the process can be very difficult. It is highly advisable to seek the assistance of a legal professional.