Techniques to conduct patentability search

When preparing to file a patent, one of the most critical steps in the process is conducting a thorough patentability search. This search helps determine whether your invention is new and non-obvious, these two are essential criteria for patentability. Skipping or conducting a poor search can lead to wasted time, money, and effort during the patent application process, making this step essential to success.

Before diving into the specific techniques, it’s important to understand why conducting a patentability search is crucial. The main goals of the search are to:

• Ensure your invention is new i.e. no prior art exists that discloses the same invention.
• Help refine your invention to make it more unique.
• Avoid potential legal and financial pitfalls related to patent infringement.
• Improve your chances of a successful patent application.

Ways to conduct a patentability search

• Understand Your Invention: Before starting the search, you need a clear understanding of your invention like Identify the key aspects of your invention, focusing on what makes it unique, Determine what your invention does and how it differs from existing technologies or products.

Having a detailed understanding of your invention will help you refine your search terms and locate relevant prior art more effectively.

• Choose the Right Patent Search Databases: There are several patent databases available for conducting a search.

1. Google Patents: A free and user-friendly tool, Google Patents allows you to search for patents and scholarly articles. It covers patents from multiple countries, including the U.S., Europe, Japan, and more.
2. USPTO (United States Patent and Trademark Office): The USPTO provides a comprehensive database of U.S. patents and applications. It’s an essential tool for anyone seeking a patent in the U.S.
3. Espacenet: Managed by the European Patent Office (EPO), Espacenet is a free patent search tool that offers global coverage. It’s a valuable resource for international patent searches.
4. WIPO (World Intellectual Property Organization): WIPO offers access to patent applications from more than 50 patent offices worldwide, including the Patent Cooperation Treaty (PCT) system.
5. Paid databases: Professional services like PatSnap, Derwent Innovation, and LexisNexis Total Patent One provide advanced search capabilities and in-depth analysis but require paid subscriptions.

• Identify and Use Effective Search Terms: To conduct a thorough search, it’s crucial to use the right search terms.

Use Keywords Related to the Invention: Start with basic keywords that describe the function, purpose, and features of your invention.

Focus on Key Components: Break down your invention into components and search for prior art that covers each component.

Search by Classification Codes: When conducting a patentability search, one highly effective method is using patent classification codes. These are special codes assigned to patents by patent offices, categorizing them based on their subject matter and the technology involved. By using these codes, you can target your search more precisely and find patents that are most relevant to your invention.

• Conduct a Broad Initial Search: It’s important to cast a wide net during your initial search to ensure you don’t miss important prior art. Use broad terms and multiple variations of keywords. Look through a mix of published patents, patent applications and once you have a large set of results, you can start narrowing them down by focusing on patents that most closely relate to your invention.
• Analyse the Results for Relevant Prior Art: Once you’ve gathered a list of potentially relevant patents and prior art, the next step is analysing these documents to see if they directly overlap with your invention.

The most important part of a patent is the claims, which define the scope of protection the patent grants. Compare the claims of prior patents to your invention.

In addition to claims, reviewing the drawings and detailed descriptions in patents can help you understand the technical details of prior art. This will allow you to determine whether the invention in question is too similar to your own.

Besides existing patents, review non-patent literature, such as research papers, technical publications, or existing products. These can also serve as prior art that may affect the patentability of your invention.

Pay attention to the filing dates of patents and applications. Only prior art that was publicly available before your invention’s priority date (the date of filing) can impact its patentability.

Document Your Search Results: It’s essential to keep a record of your search process. Document the keywords, databases, classification codes, and patents you’ve reviewed. This helps if you need to revisit your search later and provides a useful resource for your patent attorney when preparing your application.

• Know When to Seek Professional Help: While it’s possible to conduct a preliminary patent search on your own, patent searching can be complex, especially in highly technical fields.

Professional patent searchers or patent attorneys have access to advanced databases and can understand the legal terms of prior art better than most inventors.