More than 40 million patent documents have been published, with almost a million new disclosures added each year. Patent searching is done to determine patentability of a new invention or the validity of an existing patent. Other reasons include clearing or determining infringement risks involved in commercializing a new product. Often a patent search is performed to find the state of the art or the direction of an existing technology to get guidance for research and development as well as innovations going off patent. Such information can be invaluable in today’s innovation driven world. Patent searches are performed through a number of free and paid databases hosted by various patent office, commercial and non-commercial entities throughout the world according to the objective of the search.
Patent Search
Patent search can be defined as a process of retrieving and analyzing prior art inventions based on various parameters from patent databases depending on the goals to be achieved.
1. Types of Patent Search
A. Novelty Search:
- To determine novelty of new invention.
B. Freedom to operate Search
- To determine extent of commercialization without infringement.
- Also referred to as a “Clearance” search, a “right to use” search, or an “infringement” search.
C. Validity Search
- Determine validity of a patent.
D. State-of-the art Search
- To determine technology trend.
Benefits from Patent Search
- Identify innovation trends and developments in a specified field of technology
- —Discover new product portfolio which can be licensed from the patentee or used without needing a license
- —Find information that prevents duplication of research
- —Keep track of the work of a particular individual or company by seeing what patents they have been granted i.e. obtain product information on your competitors.
- —Find a solution to a technical problem
- —Gain new ideas for research in a particular field
1.2. Limitations of Patent Search
- —Patents typically publish 18 months after the initial filing date so till that time they remains out of public domain
- —Data is entered manually by patent offices and inevitably errors and inaccuracies will occur such as misindexing, misclassification and spelling errors
- —Terms used in patents have technical meanings that are different from their everyday meanings
- —Patent examiners may not classify a patent application into the most appropriate classifications
- —An organization may have changed their name or acquired patents via purchasing or licensing.
2. Developing a Patent Search Strategy
Which search tools to use?
◦ Various search type
– Simple or Basic
– Advanced or Syntax
– Boolean or Field Combination
◦ Words (synonyms, some are more likely to be in the text than others)
– Pros:Easy to use, Can be used in most databases, Infinitely flexible, Can be use singly or in specified combinations/ orders/ separations, Can search full text in some databases or restrict to titles/abstracts/abstracts.
– Cons: Need to be aware of language, synonyms (e.g. cellphone, cell phone, mobile phone), Alternative spellings (e.g US v UK, color and colour), Can be imprecise in some arts and generate too many hits (e.g. for electric circuits - control AND temperature).
◦ Classifications e.g. IPC, US
– Pros:Independent of language, synonyms, alternative spellings, terminology, quirky vocabulary, Comprehensive and detailed, Classification term can be the quickest and best way.
– Cons:Can be complex and challenging to understand beyond an elementary level, May not have any terms which are a good fit for a particular search, May be applied with varying skill and accuracy by different authorities, May generate too many hits if used at a general level, May not be universally applied.
◦ Names e.g. Inventor
◦ Dates
◦ Citations
Which fields to search?
◦ Patent Office
◦ Title
◦ Abstract
◦ Claims
◦ Full Text
◦ Bibliographic Data
3. Refining Search-Trial & Error
◦ Try in individual or combined search in different parts of patent e.g. title, abstract, claims etc.
◦ Try searching as a phrase
◦ Use different Operator e.g. AND, OR, or ANDNOT etc.
◦ Use a truncation wildcard "$" or “*” e.g. Mot$ , US2000*
◦ On/Off word stemming
◦ Include/Exclude synonyms
◦ Expand/Shrink abbreviations
◦ Increase/ Decrease time bracket
4. Patent Search Resources
◦ Patent Office Database Search
– WIPO Patentscope
– USPTO(United State Patent and Trademark Office)
– EPO(European Patent office)
– Patent Abstracts of Japan
– CIPO(Canadian IP Office)…..many more
◦ On-line Patent Office Databse Search Services
– Free Databases
— Patent Lens
— SIP Patent Database
— Free patents online
— Sumobrain
— PriorIP…..many more
– Paid Databases
— Delphion
— Q-Pat
— Boliven
— Patsnap …..many more
◦ Patent Search Softwares
– Patent integration
– IP vision
– Patent Insight Pro….. many more
Conclusion
A patent search is a crucial step to take before filing a patent application. Just as you need to do due diligence before taking on any business venture, you need to do your patent landscaping before filing a patent application. A patent search involves tedious, repeated searching through various patent and non-patent literatures using typical technical words. An unskilled person would not be able to do justice to the vast amount of literature to be searched. A patent professional, who is acquainted with better patent landscaping capabilities, can analyze your invention from the perspective of a patent examiner. Furthermore, there are ways to structure a patent application differently to make your invention fit for patentability.Since patenting is a skilled expensive procedure, it is prudent to conduct a patentability search before filing an application. Besides financial reasons, there are several other compelling reasons as discussed for conducting a search before filing an application.
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