The process of patent search enables one to determine primarily the closest prior art available with respect to a particular innovation or the art surrounding the same, be it other patent applications or non-patent literature.
A patent search is performed for a variety of reasons. Depending on what the reason is, the type of patent search varies. The reasons may be as simple as an innovator or a patent attorney trying to determine, whether the invention is patentable or not, or whether one is to try to mine out information based upon the patents filed by a particular organization or trying to invalidate a patent in an ongoing court proceeding. Whatever be the reason for performing the search, it has become an important process one cannot turn a blind eye to.
A patent search is performed primarily using the keywords. In addition to using a classification search. While using a keyword search it is paramount to have a clear understanding of the technology to be able to determine the search strings and also to narrow down from the huge result sets that one works with.
Without keywords performing a search is next to impossible. After determining the primary features of an invention, the keywords are narrowed down. Choosing the correct keywords is essential failing which segregating the correct documents becomes a tedious process.
Another aspect of search using keywords involves looking for foreign language keywords pertaining to a particular concept. This is particularly useful when looking for patent documents in a particular country where English is not the primary language such as Germany, Korea or Japan. For example: If one is looking for a device or machine in German documents, it would be a good idea to include words such as maschine or gerät which are German equivalents of machine and device respectively.
While searching for non-English documents or documents which have been filed in country-specific language. Most free and paid search databases do provide machine translation for such documents, however, the quality of these translations often impact the understanding of the technical subject matter addressed in the document. It usually is best to refer more than one source when sorting through such documents.
Classification searches are used in combination with keyword searches and help obtain the entirety of the inventions in given art. The examiner classifies a patent application according to the subject matter present in it, this facilitates in finding patent documents that pertain to similar inventions. Using classifications while performing search helps considerably in reducing the result set, this is particularly useful in cases where the invention may find application in diverse technical areas. Most of the paid databases provide for classification search using IPC, CPC, USPC, F1/F-Terms, ECLA etc.
Generally, when performing a search, it is considered beneficial to include both CPC and IPC classification as this would eliminate the possibility of missing any essential patent document.
The different types of searches include a patentability search or a novelty search. A validity or an invalidity search, a clearance search or a freedom to operate search most commonly known as the FTO and a state of the art search. As much as the keywords and mechanics of searching are important, the analysis of the data is also equally important. For instance, in a validity or an invalidity search, only the patents which are live are searched and are mostly checked only with respect to the claims. Similarly, in a state of the art search, the focus is majorly on technology as against the legal analysis involved.
A patent search is an integral process to in the patent prosecution process in its entirety. It is not limited to the filing stage. A patent can only be carefully drafted if the prior art search is done and the closest prior arts have been determined, it also helps determine the patentability which helps the applicant take an informed decision with respect to the time, money and efforts which are going to be involved in the patenting process. It is done at the examination stage by the Examiner and further after grant for various business needs, competitive intelligence needs or research and development needs. Post-grant in opposition procedures also the patent search plays a key role.
We at OutsourceIP are well versed with the various mechanics involved in the patent searches and have a team of technical specialists in different technical areas along with the patent attorneys who perform the analysis and reporting according to the needs of the clients.