A patent is an exclusive right conferred on person or legal entity to exclude others from making, using, and selling the patented invention for a limited time period. The patent can be a utility or design patent. Utility patents are granted for new and useful processes, articles, machines and any improvements while design patents are granted for new and ornamental design of manufacture. The utility patent protects the method an article is created and used. On the other hand, design patent protects only the ornamental appearance of the invention.
Search for patents
Any type of invention requires a thorough search and analysis to verify its novelty. Large organizations, lawyers, SMEs, and researchers conduct patent searches in leading patent databases to determine the relevance of their inventions in light of the existing art. Patents include technical and legal information. Some of the reasons organizations need to conduct patent search are:
Patentability: Organizations need to conduct patent search in order to assess the novelty of the invention.
Research and Development: The patent search helps to discover new technology areas or improve extant products or processes.
Economic: In the fiercely competitive market, organizations need to keep track/monitor competitor activities to gain competitive advantage.
Financial: The patent search helps to avoid unnecessary cost spent on innovations prior investing in the technology area.
Legal: Patent search determines the potential infringers and identify opportunities for licensing.
Marketing: Organizations need to gather information about new patents filed in the particular technology area, inventors, alive or expired patents, etc.
Thus, conducting a patent search is pivotal for organizations to define IP strategy, determine state of the art (unearthing the prior art and identify novel elements and understanding the IP landscape), check for freedom to operate prior foraying into the market, and locating potential infringers for the purpose of filing law suits or earn revenues.
Conducting a patent search
A prior art search is conducted in the patent databases to ascertain the novelty of the invention. It is critical to understand the objective of the search strategy prior conducting a search in the patent and non-patent literature. The search can be carried out on both commercially subscribed and other data sources available online. Some of the prominent online patent databases are Google patents, Espacenet, and Freepatentsonline.
The 5 patent search strategies include:
1. Key string search – The key string search involves keywords to carry out the search in patent databases. The search include identification of keywords that define the invention, locating terms that are synonymous to the words in the invention, and form key strings that are used in the search query in the patent database.
2. Patent classification search – In the patent classification search, patents are classified on the basis of technical content so that the specific technology area can be identified easily. One has to identify one or more classes that are relevant to the invention. There are various classification assigned to the patent applications such as CPC, IPC, US a patent classification, and European classification (ECLA). The IPC codes can be identified using catchwords that relate to the invention. Often times, IPC codes yield large amount of data and generate a broader scope. However, the number of results can be reduced by including broad keywords.
Patent classification is generally used for patent examiners as they need to refine the search and identify relevant patent specifications.
3. Citation based search – A patent document has backward (references cited by the patent document) and forward citations (references cited by current patent document). Attorneys should consider both forward as well as backward citations. Citations are references to the prior technology and can be extracted using key string search and patent classification search. Thereafter, analyze the cited documents to uncover more references and find relevant references among the citations to carry out citation search for the relevant patent documents.
4. Assignee based search – This search is conducted by extracting a list of assignees/applicant names from the relevant databases. Then add the assignee name in the patent databases to gather information about the assignee/applicant who have granted patents for their inventions. There might be cases where there is less number of patents or more number of patents to their name.
5. Inventor based search – The search involves extracting a list of inventors from the relevant documents and adding query in the database using the inventor's name.
Embracing these patent search strategies will not only make the research comprehensive but also unearth the relevant references related to the patent.
At Effectual, we help clients to conduct patent search in subscribed patent databases to ascertain if the invention is new and non-obvious. Our patent search team has in-depth knowledge and hands on experience in searching on multiple patent databases.
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.