Conducting a patent search at the beginning of your quest to patent your invention is design is absolutely necessary. There are numerous benefits or advantages behind a patent search.
First off, a patent search means searching to determine if a particular invention (or its elements being claimed as deserving protection) have previously been disclosed to the world. This could include previously filed patent applications or other public disclosures that would allow anyone having skill in this area to reproduce your invention.
If an invention (or its claimed elements) have been previously disclosed to the public, the invention cannot be subsequently patented. Only novel (new) inventions or designs are capable of patent protection.
Knowing whether the invention previously exists will help you make the determination of whether or not to file a patent application with the United States Patent and Trademark Office (USPTO). The USPTO controls the patent process. All patent rights exist pursuant to federal law. There are no state-law patent rights.
A patent search may also provide you useful information regarding how to write the patent application to make it more likely to be accepted by the USPTO. When the USPTO examines a patent application, it will conduct a thorough search to determine if the claimed elements of the patent have been previously disclosed. If so, the patent application will be rejected. As such, doing a thorough patent search now will help you identify the elements that may conflict. You can thus write your patent application in a manner that is more likely to be accepted.
In this article, we discuss various rules to follow to carry out an effective patent search.
Understand What is a Keyword, Classification, and Citation Search
A “Keyword” search, as the name implies, is the use of keywords to search for prior patent applications or issued patents. A Keyword search can be used to search within restricted aspects of a patent database, such as title, inventor, claims, abstracts, or entire text. Keyword searches require an understanding of the words used to describe the invention or its claimed elements. You will have to be creative and think of many potential explanations and synonyms for the verbs and adjectives you use. Also, keyword search will be used in conjunction with classification and citation search.
Patent applications are divided and subdivided by classification. Basically, the useful function of the invention generally provides the classification criteria. For example, if you were searching for prior patents on door hinges, you would be able to identify the class into which most or all door hinge applications are categorized. Using a keyword search within the applicable class of your invention will prove to be very useful. It will also be useful to simply scroll through the many patents relevant to the applicable class of invention.
Lastly, you can identify citations for a relevant patent. If a patent application makes 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.
Start with a Google Patent Search
It may surprise you that my advice is to being by searching patent applications on Google. Many people do not realize that Google provides a very comprehensive database of prior patents filed in the United States. The patent repository dates back to the late 1800s.
The reason for beginning with a Google Patent Search is because of the ease of search. Google allows even novices to perform searches of prior patent applications. The benefit of Googles is also the major downside. The search engine does not allow the same advanced criteria for search that some other patent databases provides. Nonetheless, getting started with a broader search can help provide parameters for your search.
The first step is to go to google.com/patents. Once there, choose the “advance search” button. The primary search mechanism for search on Google patents is through keyword. Try to search by the most restrictive keywords first, such as title, inventor, claims, abstracts, or entire text. You will be able to choose patent applications and/or granted patents. If your keyword search within these restricted fields fails, then you can move on to a keyword search for the entire document. In any event, you will need to be creative with your keyword search. You will have to think of the various ways that an inventor or patent filer would describe the claimed elements of the invention. Try to employ synonyms for verbs that reference the function of the invention.
After enough searching, you should be able to find some relevant patents. The patents 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.
If this did not answer you questions about how to use the Google Patent search database, try LawTrades’ free question-and-answer service.
Move On to Search the USPTO Database
As most inventors know, the USPTO provides a database of full texts of patents filed after 1976. Patents filed prior to 1976 are listed in PDF format. This makes it very difficult to search these older patent applications. Armed with the patent information you have acquired from Google, however, you may be 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. The purpose of this search is to broadly identify patents and classes of patents.
Once you have identified a list of relevant patents and their classifications, you can move on to a “class” search on the USPTO website. Enter the patent class and/or sub-class that you identified during your Google search. You will then perform a keyword search. If you identify a patent class and subclass, the search results will return links to view all published patents and applications within this class.
As you can see, beginning with a Google search becomes useful to narrow down a patent search in the USPTO database.
Let’s Go International
Searching in the Google and USPTO databases is an excellent method for identifying prior patent applications or patents issued within the United States. A patent application, however, will fail if the claimed invention has been the subject of a patent application in another country.
Each country has its own patent application system. As such, it will have its own database for searching patent applications and patents. There are, however, databases that aggregate patents applications or patents issued in other countries.
The best source for searching European patent applications is Espace, located at http://ep.espacenet.com/. Espace also 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 (Chines, Japanese, and Korean to English), track emerging technologies, and identify what competitors are developing.
Espace provides a powerful classification search tool to retrieve publications in a particular technical area. As previously discussed, searching within specific classifications can greatly enhance your search results. Espace provides a “Global Dossier”, which bring together documents when the same documents have been filed in multiple patent offices. It provides access to the correspondence (“File Wrapper”) between applicants/attorneys and the offices of filing (Canada, China, Europe, Korea, Japan, US, PCT applications, etc).
Lastly, Espace has a common citation document (CCD) tool that provides a single point of acres to citation data for the patent applications in the largest five IP offices. Basically, it consolidates the prior art cited by the participating offices and shows those search results on a single page.
Don’t Forget About Patent Applications
As you are aware, patent applications (patents pending) are published in the public records 18 months after the date of application. In the meantime, inventors have some running room to continue developing their brand around the patent.
It can be helpful, however, to know the status of patent applications that could potentially conflict with your invention. The USPTO has a “Public Pair” function that allows searchers to view the statues of patent pending applications. You will be able to read the comments from the USPTO examiner, her objectives, and how the inventor has responded to those objections to the application. This will be particularly helpful if your invention is similar and nature and you need to understand how the application will be examined by the USPTO.
Another useful feature offered by the USPTO is a browser plugin for FireFox that allows you view PDF files within the browser. It also provides access to patent assignments and several other useful features.
LawTrades Knows Patent Searches
The above-stated rules are just 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.
Make certain that any patent search firm you employ is reputable. There are many firms out there who seek to take advantage of inventors. They offer bargain prices for searches and attempt to bundling the patent search with other services offered by the firm. For example, the firm may offer patent filing, design, production, logistics, and other services related to the invention. These combinations are normally a sign that the company is not reputable.
Remember, when you hire a legal professional to do a patent search, they will discuss with you the patent search results and provide you a patentability opinion. You generally do not get this benefit from a patent search firm. The takeaway is that working with a patent professional entails many advantages during the search and filing process.
If you are considering filing for patent protection or undertaking a patent search, reach out to the intellectual property attorneys at LawTrades. They are experts in all matters of intellectual property law, including patent searches and filing, and can provide legal advice necessary to maximize your rights in your invention.