Patentability Searching Best Practices
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This article addresses obstacles specific to patentability searching. If you are a newcomer to prior art searching, see the General Searching best practices article to learn about basic search techniques which are broadly applicable to many types of searches. For further reading, techniques which are only applicable to certain subject areas are discussed in a series of best practices articles directed to a variety of specific technical fields, which can be accessed from the Best Practices directory page. Finally, additional specialized techniques which may be applied to validity or infringement searches can be found in their respective articles.
Before filing an application, it is advantageous to perform a preliminary patentability search. Doing so will provide an idea of the closest related prior art, and allow the patent claims to be drafted "around" this previous art, so that the novelty of the invention will be more obvious to the examiner.
In addition to being used as a preliminary research tool, a patentability search can aid in the preparation of an application. The search will help define an appropriate breadth for the claims of a future patent application as well as act as an aid in finding which aspects of the technology to focus an application on.
Obstacles Facing the Searcher
Time is often an obstacle with patentability searches. A patentability search is often a short search ranging from anywhere between 4 hours and 20 hours. Because they are short in nature, it is important to understand the main novel idea of the invention disclosure to be searched. By doing so, a searcher will be able to quickly scan a large set of search results looking for prior art that appears relevant to the main idea. Upon finding the relevant art, the searcher can then determine if the art has additional search features of interest.
In addition to finding related art, some patentability searchers may also be tasked with identifying less relevant documents that could contain "alternative embodiment" ideas that will be included in the drafting of the patent specification. Alternative embodiments are changes made to an invention's non-essential or non-novel parts, but that show how the invention could be adapted to work in different situations or with existing products. For example, an invention for a curtain-hanging device could work whether the user was hanging curtains, drapes, or valances, and it might also work for hanging blinds. Or, as another example, a novel design for a jacket that holds an MP3 player in an inner pocket would work whether the inner pocket were detachable, or sewn into the jacket fabric.
Alternative embodiment searching may not be necessary in all patentability searching. The bottom line is that searchers should always discuss the main goal of the search with a patent attorney, and tailor the focus of the search (and what kind of results are returned by the search) to the requester's specifications.
Searching Patent Documents
A patentability search will usually include a search in major patent collections, normally encompassing at least the United States (US), European (EP), Patent Cooperation Treaty (WO/PCT) and Japanese (JP) collections. Although any prior published document can be used against a patent application, most patent examiners from major patent offices will go straight to these collections, so it makes sense to include them in any patentability search, no matter how cursory. The patent search tool should be selected so as to gain necessary basic coverage, but pricing is usually a constraint with shorter patentability investigations. Many commercial and free tools will have some coverage in US and major foreign country databases.
Searching Non-Patent Literature
A patentability search will also include a non-patent literature search. Major non-patent literature sources encompassing many technical subject areas include, but are not limited to:
Specific Search Strategies
These search strategies are examples of specific best practices that can be applied during the course of a patentability search. These are steps to be taken in addition to accepted search practices that apply to all searches. For a more general progression of search steps, please see the General Searching article.
- Always discuss the general search focus with the search requester. Determine whether there is a need to search for documents which may describe alternative embodiments, or if a straightforward search for only the most relevant art is needed.
- Ask the search recipient if potential claims have been drafted for the patent application. If so, the searcher should discuss whether a search on all of the claimed features is needed, just as the examiner would perform upon receiving the application. (Sometimes patentability searches are performed to determine whether further research is viable before proceeding, and thus initial claims are not always available.)
- Always perform a search on the inventor name to get an idea of the person’s core research interests. Collaborators and heavily cited colleagues are possible influences/sources of similar art.
To learn more about general search techniques, see the General Searching article.
For search strategies tailored to specific technology areas, select the appropriate technology best practices article from the Best Practices directory page.
- Hunt, David, Long Nguyen, and Matthew Rodgers, (ed.). Patent Searching: Tools & Techniques. Hoboken, NJ: Wiley. 2007.