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Why is Patent Search Required?

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Patent Search

Whenever you enter a research project it’s a must to conduct a prior art analysis. This analysis can save you huge sums of money by detecting existing developments. It can also show you the best partners with whom you can collaborate. By basing your R&D work on what already exists, you can embark on genuinely innovative work.

It is most likely that your work, even based on an initial analysis, will venture into unexplored territories. In addition, during your research, new publications are made. Therefore, a permanent technology watch, detecting the latest publications in your research field, will keep you up-to-date on the progress made by others. 

Prior art searches can have serious financial consequences as they can put into question a research programme or the commercialization of a new product or process. While one can adopt, in an initial phase, an amateurish approach, the complete analysis must be left to information specialists using professional tools. This should not prevent you, however, from conducting a pre-analysis yourself to get an indication of how active a field is and who the major players are.

Why is Patent Search Required?

A patent specification, which is also termed as disclosure, is a written description of an invention. Generally, the patent specification is drafted with a view to satisfy the statutory written requirements for patentability, as well as to define the scope of the patent claims. While the layout of the patent specification varies across different jurisdictions, patent claims form an essential and most critical component of the patent specification, as they define the scope of the invention. The goal must always be to try to get patent claims allowed that will be construed to have an intended scope, with a minimum prosecution history.

One of the most common difficulties faced by inventors while discussing the invention with a patent attorney is to define the patentable features. Generally, inventors are unable to describe what according to them are the patentable feature and/or unique contribution their invention makes to the relevant field.

Also, it is common for the inventors to opine that they have never seen anything like their invention in the market, so they believe there is nothing that could restrict them from obtaining a patent. While this may seem theoretically possible, it is simply not true. There are numerous factors contributing to the fact that why something may have already been patented, or a design around technology may also have been patented.

For example, many times a patent is granted but, the product never makes it to the market. Additionally, some companies aggressively publish defensive publications to prevent their competitors from patenting a technology. Thus, it is always wise to do a patent search to start the process. It is always better to have a good idea about the related inventions, it further allows the inventors to decide whether moving forward makes sense, and it also allows for a patent application to be written in a way to emphasize on the unique, and likely to be patentable, aspects of an invention. Therefore, inventors should always be careful, and getting professional assistance from a patent attorney is the best and safest way to proceed.

Importance of Prior Art

There are many reasons why you should systematically use patent databases as a source of technical information:

  • Patent documents contain information you will not find elsewhere

Since patent documents must describe inventions in such a way that persons skilled in the art can reproduce them, (insufficient disclosure can result in the rejection of a patent application) these documents will contain detailed information you will not find in classic scientific publications.

  • Patent documents are easily accessible

Today many patent databases are available freely on the Internet. Patent offices worldwide have agreed on publication standards and the sharing of their publications, resulting in global, well structured databases. Patent data is also classified according to a universally accepted scheme, subdividing the technical fields into very fine sub-domains. Classic scientific publications, on the other hand, originate from many sources and do not respect publication standards as patents do.

  • Patent documents being systematically classified

You can quickly access huge amount of information on a given subject. This patent relates to free parking place indicators and is assigned to a technical subdivision of the International Classification G08G1/14 containing another 193 patent documents all relating to that subject.

  • Patent information is up-to-date

Most companies prefer not to disclose their research results for obvious competition reasons. But if a company wants to obtain exclusive rights on its invention, it must file a patent application that will eventually be published and made available to the public. This explains why patents are often the first publication on a given invention and are therefore a very up-to-date source of information on a technology.

  • Patents offer more than technical information

As patent documents can be legal titles of ownership, they give precious indications on which companies hold a technology, on inventors, on the length of ownership, on the free availability of a technology when the patent is lapsed, etc.

How to Conduct a Patent Search?
  • United States Patent and Trademark Office (USPTO) Specific

Step 1 -> Come up with terms to illustrate your invention based on its rationale, work of art and utility.

For example if your patent is about a dog’s harness that carries a water pouch and has an attached water dispenser, the correct usage of keywords may be, including synonyms, dog/pet/animal + vest/harness/dispenser/pouch + Liquid/water etc.

Step 2 -> U. S Patent Classification

Classifications system categorizes things based on characteristics and relationships. The United States Patent Classification (USPC) was the official patent classification system used and maintained by the United States Patent and Trademark Office (USPTO). It has been replaced with the Cooperative Patent Classification (CPC) as of January 1, 2013.

The Cooperative Patent Classification (CPC) is a patent classification system, which has been jointly developed by the European Patent Office (EPO) and the United States Patent and Trademark Office (USPTO). The CPC is substantially based on the previous European classification system (ECLA), which itself was a more specific and detailed version of the International Patent Classification (IPC) system.

Patent publications are each assigned at least one classification term indicating the subject to which the invention relates and may also be assigned further classification and indexing terms to give further details of the contents.

Class Heading:

  1. Human Necessities
  2. Operations and Transport
  3. Chemistry and Metallurgy
  4. Textiles
  5. Fixed Constructions
  6. Mechanical Engineering
  7. Physics
  8. Electricity
  9. Emerging Cross-Sectional Technologies

This classification closely follows the International Patent Classification.

The International Patent Classification (IPC) is a hierarchical patent classification system used in over 100 countries to classify the content of patents in a uniform manner. It was created under the Strasbourg Agreement (1971), one of a number of treaties administered by the World Intellectual Property Organization (WIPO). The classification is updated on a regular basis by a Committee of Experts, consisting of representatives of the Contracting States of that Agreement with observers from other organizations, such as the European Patent Office.

Class Headings:

  1. Human Necessities
  2. Performing Operations, Transporting
  3. Chemistry, Metallurgy
  4. Textiles, Paper
  5. Fixed Constructions
  6. Mechanical Engineering, Lighting, Heating, Weapons
  7. Physics
  8. Electricity

There are currently nine class headers in the Cooperative Patent Classification (CPC). You can use the online index available on the USPTO site to find out the class for your invention.

Step 3 -> Now when you have the desired keywords and the specific class/sub-class of your invention, time to put it to search.

For searching the patent you can access the PatFT database in which all patents, regardless of whether a pre-grant publication was made, are indexed. Go to patft.uspto.gov.

On the LHS column of the screenshot, ‘PatFT: Patents’ is the section where you can search for the granted US patents since 1976. While using the links of the column at the RHS, ‘AppFT: Applications’, you can search for the US patent application published since March 2001.

In PatFt, there are three types of searches:

  1. Quick Search
  2. Advanced Search
  3. Number Search 
General Prior Art Search

 Step 1 -> Finding the appropriate keywords

To maximize your chances of finding relevant information, spend some time thinking of keywords or search terms which best describe your idea.

When using search engines, the most obvious key words may be unhelpful. For example, let us say your idea is a mousetrap. A search for ‘mousetrap’ produces over two million hits – many of them irrelevant, and an impossible number to search.

But a search for ‘rodent trap’ (synonym) and ‘trapping mice’ (what it does) produces 20,000 and 700 hits respectively. These are still not small numbers but they are likely to be more relevant, so we can usefully start searching here.

Look out too for new terms for new technologies: for example, ‘virtual fit’ for software systems to replace trying on clothes in shops, and ‘telemedicine’ for remote monitoring of patients in their own homes.

Step 2 -> Product Searching

You need to find out what is already on the market:

  • That is similar to your idea (prior art).
  • That tackles the same problem (competing art).

Obsolete technologies or products may be prior art, so check historical as well as current sources of information.

You should also search offline – in shops, books, periodicals, printed catalogues etc.

And talk to people with relevant experience – for example, retailers and suppliers – who will have seen products come and go over the years and may have seen your idea among them.

Step 3-> Patent Searching

For many ideas, patent searching will be far more important than product searching. Although many products on the market do not have a patent, they are probably heavily outnumbered by the many ideas that are successfully patented but never reach the market.

Patent searching involves two skills:

  • Finding every patent document that is relevant to your invention.
  • Interpreting the significance of your patent search findings.
How long will your search take?

It could range from a few minutes, if your first keywords are accurate and there is a great deal of prior art, to many hours.

The best advice is that you must be prepared to spend all the time it takes to be confident that you have done a proper job. Your mission is to find evidence that disproves the novelty of your invention. Your hope is that you will fail, but in the interests of a thorough search you must put that to the back of your mind.

For the same reason, assume that if you are not finding prior art, you are looking in the wrong places.

Keep searching until you are confident that there is nowhere else left to look. And keep records of everywhere you look and everything relevant that you find.

For more information on Patent Search please Contact Us

3 thoughts on “Why is Patent Search Required?

  1. Dear Rahul
    It is interesting to read through your blog. I was wondering if you would keep this up in the future. I would like to see more comparisons between the US/European Systems vs the Indian System. At times it would be interesting to hear about cases going on in India as well.
    Best of luck
    Neelaabh

    Like

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