Patent searching is a process of identifying granted patents, published patent applications and non-patent literature similar to the subject matter. Further, any invention requires thorough research and analysis to verify its novelty. Organizations, attorneys, start-ups and researchers conduct patent searches in large patent databases to determine the relevance of their inventions in the light of existing prior art.

Following goals are achieved, few are mentioned as: 

Patentability: To assess the novelty, obviousness, and industrial applicability of the invention. Further, it helps in determining the strength/probability of having a patent for a proposed invention.

Research and development: Help in discovering new fields of technology or improving existing products or processes.

Economical: In the highly competitive marketplace, companies need to track/monitor the activities of the competition in order to gain a competitive advantage.

Financial: Finding patents helps avoid unnecessary innovation costs before investing in technology.

Legal: Patent research identifies potential infringers and identifies licensing opportunities.

Marketing: Organizations need to collect new patents registered in the specific technology area, inventors, existing or expired patents, etc.

Different steps to do before conducting a patent search?

Before conducting a patent search, the below rules should be followed to improve the search quality and results.

Understand the invention and technology so well to find all the areas where it could be used. For example. The key idea behind the proposed invention, technical problem and solution to the problem, shortcomings in the existing prior arts.

Find all related words and synonyms that can be used. For example. Mobile phone, cell phone, cellular phone, wireless phone etc.

Initiate with a narrow scope to a broader scope. Further, start with directed logic, limited keywords, perhaps the same as those used in the patent in question. Read some patents, build a library of related keywords, phrases, and general concepts. For example. “Solar water heater”, “Solar geyser”, “Solar energy hot water heater”, “Solar energy geyser”.

Create a timeline of technological development. In the past, the technology could have been called very differently than it is today. Try to find out, create a technology development timeline. Remember what people would call the phone in 90 or 80s? Replace the phone with the name of your technology.

If you find a relevant patent, try accessing its file wrapper and reviewing all office actions and events. These things will help to understand the commercial potential of your invention and identify state of the art as well.

Different databases to conduct patent searching?

There are different databases where patent searches can be conducted. In the market, both types of search databases are available free patent database and paid patent database. Below listed are very few accessible patent databases to conduct patent search and analysis.

  • Google Patents
  • Espacenet
  • USPTO Web Patent Database
  • PQAI
  • Patent scope by WIPO
  • Lens.org
  • Free patent online

Paid Patent Databases where patent searches are conducted quickly and conveniently:

  • Orbit.com
  • PatBase
  • Patseer
  • Derwent World Patent Index (DWPI)

How to conduct patent searching?

Strategies that help to conduct effective and efficient patent search are mentioned below:

Key string: The key string search includes keywords to perform the search in patent databases. The search consists of identifying keywords defining the invention, the location of terms synonymous with the words of the invention, and the form of the key strings (Search queries) used in the patent database. For example. “Solar AND water heater”, “Solar geyser”, “Solar energy AND water heater”, “Solar energy geyser”, “Solar hot water heater”, “Solar energy water heater”, “Solar energy AND water heater”.

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Classification search: In the patent classification search, patents are classified according to technical content to quickly identify the specific technology area. One or more classes relevant to the invention must be identified, such as IPC, US Classification and a European Patent Classification (ECLA). The IPC codes can be identified by keywords related to the invention. IPC codes often produce a large amount of data and generate a larger volume. The results can be narrowed down by including general keywords. Further, patent examiners generally use patent classification because they need to refine their search and identify the relevant patent descriptions. For example

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Assignee and inventor search: This search is done by extracting a list of Assignee/inventor names from the appropriate databases. Then add the Assignee/inventor name to the patent databases to collect information on the Assignee/inventor who has patents for their inventions. There are high chances to find out relevant cases, and they have patents in their name. For example

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Citation search: A patent document has backward citations (references cited by the patent document) and forward citations (references cited by the current patent document). This strategy should be considered for both forward and backward citations. Moreover, citations are references to previous technologies and can be extracted by searching a key string and patent classifications. Then scan the cited documents to discover further references and find relevant references under the citations to search for citations of the relevant patent documents. For example.

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Further search strategy that can be applied with restrictions:

  • Selected sections of patent applications: Patent databases enable searches in text sections, titles, abstracts, claims, bibliographical information.
  • Search according to date criteria (usually the earliest priority date).
  • Non-patent search (not relevant for an FTO patent search). For example

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Disclaimer: The present article intends to provide general guidance on the subject, and you can also consult us in your specific case.

Author

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    Abhishek is an intellectual property Attorney. He specializes in the registration and maintenance of patents, designs, trademarks, and copyrights. He regularly assists companies in relation to crucial technology issues. He also helps organizations or individuals to develop patent portfolio management strategies for exciting new inventions and processes. Abhishek has past work experience with reputed firms like SaiKrishna and Associates Advocates, L.S. Davar and Co., Masilamani Law Partners, and Ripple IP Services (NCR).