Once upon a time I studied thermodynamics. I was told that the
first time you study thermodynamics you don't know what you are
doing; the second time you think you know what you are doing; and
the third time you know you don't know what you are doing, but
by that time it's too late so you just get on and do it. Patent
searching is a bit like thermodynamics in that respect. It may seem
difficult at first and then appear easier, but a little confidence
can be a dangerous thing. There is more to patent searching than
entering a few keywords and numbers.
Your intentions define what type of search you need to do. If
you have an idea for a product that you want to protect then a
novelty or patentability search is required. If you want to import
a product into a country or start using a new product then a
freedom-to-operate search is required. These two types of searches
have vastly different requirements. Freedom-to-operate searches are
relevant to a specific country you want to operate in, are limited
to current patents and involve investigating every feature of the
product. Novelty searches need to be worldwide, back as far in time
as possible, with a view to the product as a whole. With over 30
million patents worldwide and a million or so being filed every
year that's a lot of searching, which leads me to...
The International Patent Classification. The International
Patent Classification, or IPC, is a classification system used to
classify patent applications into technical groups. There are
currently over 70,000 groups with more being added as it is
developed and new technologies emerge. The IPC, and other similar
classification systems, help with searching as it enables you to
search in an area where similar ideas to your own will be found.
This helps reduce the total number of patents you need to look at,
and is widely considered to be the best starting point for a
search. Often more than one group needs to be searched because each
group focuses on a different aspect of the invention, and a patent
is classified according to how it has been described.
Similar ideas can be described in a multitude of ways due to the
variety and complexity of the English language, not to mention all
of the other languages patents can be filed in. The World
Intellectual Property Organisation or WIPO has ten official filing
languages including Arabic, Chinese, French, German, Japanese,
Korean, Portuguese, Russian and Spanish as well as English. It is
no defence to claim ignorance of a relevant patent just because it
was filed in a language you couldn't read. Forget about the
foreign language problem for a moment and consider English again.
You may describe your idea using certain well known words, but
another inventor could describe a similar idea in equally well
known words. For example consider "plastic" vs.
"polyethylene", or "metal" vs.
"copper", or "fan" vs. "air movement
device". You need to be able to think laterally to determine a
range of relevant keywords, including generic ones such as plastic
and metal, that will be useful in your searching, but also be able
to recognise a further keyword in a specification as being relevant
to you. In my primary field of pharmaceuticals I have to consider
and locate references not only to the name of the drug
(Citalopram), but to the name on the box it comes in (Cipramil),
its chemical name
and what it is (an antidepressant), as well as a few other things.
This is a complex example but all searches have to follow similar
Patent searching is something anybody can do, and it can be done
for free using national patent office databases or Google Patents
or similar, but there are inherent limitations in all aspects of
the process. Free databases don't often cover everything so
you'll need to search more than one, and they all use different
interfaces and codes. Many years of experience in a technical field
doesn't always equate with being able to perform an adequate
patent search. An expert patent search should be seen as a form of
insurance or risk minimisation. The downside of not searching can
be considerable, for example, significant patent filing costs can
be thrown away if your new idea isn't so new, or worse, there
is the possibility of being sued for infringement.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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