Patent Searching

Why conduct a search? 

• Reduces time and money directed towards redundant research

• Provides manufacturing and design improvements resulting in superior products and manufacturing processes

• Better understanding of the most cost-effective approach for building and protecting IP

• Reduces the risk of infringing by third party patent holders

 

Types of Patent Searches

Patentability/Novelty Search

Helps identify whether or not an idea is novel and inventive in view of the prior art.

Comprehensive patentability search should include all types of prior art (patents and Non-patent literature).

The prior art is defined as:

• Information in a document that is publicly available

• Information made publicly available through doing an ‘act’

Types of prior art include:

• Patents

• Invention disclosures, conference papers, research publications and academic papers

• User guides, technical manuals

• Sales and marketing materials

• News sites, press releases, etc.

• Oral disclosures

• Commercial use of the invention

 

Freedom to Operate Search

• A freedom to operate search (FTO), determines how similar your product is to existing patents.

• Search results show how likely you are to infringe a patent by making and selling your invention.

• FTO search can help R&D teams design around existing patents.

 

Landscape Search

• Landscape search provides a picture of a technological field rather than around a certain technology.

• Identifies potential competitors and existing products within a technological field.

• Allows researchers to make strategic decisions at any point within the innovation cycle.

 

Invalidity Search

• Conducted to validate claims or to invalidate the claims of a competitor’s patent.

• Typically one of the initial steps taken when confronted with a patent infringement suit.

• Patent invalidity searches are also conducted to assist with investigating the strength of a patent while exploring potential licensing opportunities.

 

Competitor/Watching Search

• Monitor filing activities of competitors; determine the technical basis on which ccompetitors products are based.

• Determine competitive product information – design around a patent or get ahead of your competitors.

• Commercialise anything not covered by a patent’s claims e.g. you may discover a significant use for a product that is not covered by your competitor’s patent.

• Improve on the technology already patented and patent your improvement and may led to commercialization of the improvement.

 

Tools to Help Build Search Queries

• Group keywords into concepts, start with narrow, focused terms, review patents and start pulling out more keywords. Use synonyms.

• Classifications Codes such as the International Patent Classification System (IPC), Cooperative Patent Classification (CPC), US Patent Classification(USPC), Japanese Patent Classification Systems (F-terms)

• Patent applicant and inventor names

 

Keywords

Use keywords and concepts, start with focused words and then expand.  Try and use classification codes and applicant name.  For example, focused keyword searching and synonyms for ‘RECYCLE’ located a variety of possible terms to search.

• Recover

• Reprocess

• Salvage

• Scrap

• Waste

 

Conclusion

• Select the right search

• Use keywords and concepts, start with focused words and then expand. Try and use classification codes and applicant names

• Searching can uncover a wealth of information and immensely benefit companies from start up to multinationals by identifying infringers, competitors, licensing and collaboration partners and commercialisation opportunities.