Written by Craig Whitcomb
In Step 4 of Remarkable Venture Inventing you will complete a thorough patent search. This is a critical step for any inventor or business seeking to protect their intellectual property. A comprehensive patent search involves researching existing patents and patent applications in order to determine whether an invention or idea is new and non-obvious, and therefore eligible for patent protection. In this article we are going to discuss 7 considerations when performing a patent search.
Many find that a professional patent search is not a good return on investment as a precursor to a utility patent application. The expense is high and the results are sometimes subjective. In the end a USPTO examiner is going to do his or her own search and make the final decision. But a thorough personal search is well worth the effort early in product development stages and will guide your direction and help you avoid costly and time consuming mistakes.
Before starting a patent search, complete Remarkable Venture Inventing steps 1-3 (problem statement, solution concept and product search) to make sure that this step is going to add value. It is not recommended to do prototyping or proof of concept ahead of the patent search.
Document the results thoroughly as you go, in an organized way to keep you on track and have information to report in your listing upon completion.
Before starting a patent search, it’s important to define the scope of the search. This means identifying the type of invention or idea, the relevant technology or industry, and the geographical scope of the search. Also, decide if your future patent should include patent protection outside of the US and specifically what countries should be included. By narrowing down the scope, it’s easier to identify the most relevant patents.
The comprehensive sources of patent information such as the United States Patent and Trademark Office (USPTO), the European Patent Office (EPO), and the World Intellectual Property Organization (WIPO) databases. Other good options are Google Patents, Espacenet and FreePatentsOnline. These databases can be searched using keywords, patent numbers, or inventor names.
A keyword search involves using relevant keywords to search for patents and patent applications related to the invention or idea being researched. It’s important to use a variety of keywords and synonyms to ensure that all relevant patents are identified.
Patent classification systems are used to categorize patents according to their technology or industry. The two most widely used patent classification systems in the United States are the United States Patent Classification (USPC) system for patents prior to 2015 and the Cooperative Patent Classification (CPC) system for patents from 2015 and beyond. Searching for patents using classification codes can help to identify patents that may be relevant but may not have been identified using keyword searches.
Once relevant patents have been identified, it’s important to review them in detail. This involves analyzing the patent claims to determine the scope of protection that has been granted. It’s also important to review the patent drawings and specifications to understand how the invention works.
In addition to patents, it’s also important to consider non-patent literature when conducting a patent search. This includes academic papers, technical reports, and conference proceedings. Non-patent literature can provide valuable information about the state of the art in a particular field, and can help to identify potential competitors.
Completing a thorough patent search can be a complex and time-consuming process. You may want to consult with a patent attorney to ensure that the search is conducted properly and that all relevant patents are identified. A patent attorney can also provide advice on the strength of any potential patent claims, and can help to navigate the patent application process.
Putting forth the necessary time and effort into a patent search or hiring a professional can save time and money down the road and give inquiring companies confidence in your abilities.
Since every search is different it is difficult to say what constitutes a “thorough” search. The best way to communicate the amount of effort put into a search is to document the keywords, patents and classifications reviewed as well as the time spent on the search. Finalize the information in a report and provide this to inquiring companies for your Remarkable Venture listing.
To continue the Remarkable Venture Inventing series, read: Remarkable Venture Inventing Step 5 – Finalize the Solution next.
Please help the community by adding your expertise relating to this article or asking/answering questions in the group discussion below. Remarkable Venture does not offer legal advice. Consult with a qualified Attorney for decisions concerning your particular needs.
